The Women's IP World Annual 2019/2020

Contents
page 04
AIPPI Opening letter
by Olga Sirakova, AIPPI Secretary General.
page 05
Genius, Creativity, and Endurance: all in the long
journey of women’s recognition
By Renata Righetti Pelosi, AIPPI President.
page 07
The Importance of Women in Innovation
by Bobbie Carlton, Founder, Innovation Women.
Law firm profiles, bio’s and article
Africa
page 11
Anku.Anku At-Law - Partner profile & article -
Trademarks Exclusivity: THE HAMPATA CASE
by Sarah Norkor Anku, Senior Partner at Anku.Anku
At-Law.
page 15
OAALaw - Partner profile & article - IP Funding a
key to entrepreneurial development through IP
asset ownership in Africa
by Mary Concilia Anchang - partner at OAA Law.
page 19
Stillwaters law firm – Profile & article - The
importance of Intellectual Property to Small and
Medium-Sized Enterprises
by Amaka Okafor Associate, Stillwaters Law Firm
Asia
page 23
Corner Stone & Partners, Partner profile & Article
- Cross-Class Protection of Well-known Marks
Should Accord with Their Popularity
by Brenda Zhao of Corner Stone & Partners.
page 27
Women in Intellectual Property Law
by Anomi I Wanigasekera - Partner at Julius & Creasy.
www.womensipworld.com
We are delighted to present you with the launch edition of The Women’s IP World Annual 2019/2020, celebrating
women at all levels working in IP Law and Innovation. From the very beginning, the response and feedback we have
had was amazing, and we would like to thank all of the incredible women involved. Our aim was to celebrate a group
of diverse women, from all over the globe, showcasing their achievements and also their personalities to inspire and
inform. We have taken an unbiased approach and kept the articles & profiles as authentic as possible, to keep the
author’s own personal style. This has resulted in a cocktail of inspirational women coming together to share thoughts,
ideas, and experience positively. We hope you enjoy this issue as much as we have enjoyed putting it together.
Ms. Elvin Hassan - Editor & Head of International liaisons
page 28
LexOrbis Partner profile
Manisha Singh, Co- Founder and Partner at LexOrbis
Europe
page 31
Dr. Helen G. Papaconstantinou and Partners,
Partner profiles & presentation
Women as lawyers and leaders in IP in Greece.
page 34
Patpol Partner profile
Izabella Dudek-Urbanowicz.
North & Central
America U.S.A
page 36
Advitam, Partner profile & Article - The Myth of
Work-Life Balance
by Michele S. Katz Founder Advitam IP, LLC.
page 39
Dumont, Partner profile & Article - Why
is everybody talking about cultural
misappropriation?
by Laura Collada, Dumont.
page 43
Eproint, Partner profile
Gabriela Bodden.
South America
page 45
Litvin Marzorati Legalis, Founder Partner profile
Melisa Litvin.
page 46
Estrategia Juridica, Director & Attorney at
Law profile
Claudette Vernot.
IP Service provider
profiles, bio’s & articles
page 48
Patent Seekers - Women of Science
by Freya Shepherd, member of the Biotech team at
Patent Seekers.
page 51
Minesoft, Co-Founder & Managing Director profile,
Ann Chapman-Daniel - Article, taking out the trash:
big industry starts clearing up the mess made by
our ‘throwaway’ society
by Moira Sivills, Business Development Executive, &
Caitlin Kavanagh, Marketing Executive, Minesoft.
page 55
Dantofon, Co-Founder & Strategic Operations
Manager profile, Lee-Ann Picoto - Article
Innovation in its modern meaning is a new idea,
creative thoughts, new imaginations in form of device
or method.
page 59
Brand Enforcement UK LTD, CEO profile
Lisa Lovell.
page 60
Carlton PR & Marketing. Innovation Nights,
Innovation Women, Founder profile
Bobbie Carlton.
Carlos Northon
Founder & CEO Northon’s Media PR & Marketing Ltd
Publisher of The Global IP Matrix & Women’s IP World
carlos@northonsprmarketing.com
Elvin Hassan
Editor for The Global IP Matrix & Women’s IP World
Head of International liaisons for Women’s IP World
elvin@womensipworld.com
Craig Barber
Head of Design for The Global IP Matrix &
Women’s IP World
info@northonsprmarketing.com
02 03

Letter from AIPPI
OLGA SIRAKOVA - SECRETARY GENERAL OF AIPPI
My name is Olga Sirakova, and I am
writing this opening letter in my capacity
as Secretary General of AIPPI. It has been
my honour and pleasure to serve AIPPI in
different roles, including as Secretary and
President of the Bulgarian group of AIPPI,
four years as a member and four years
as Chair of the Nominating Committee,
and the last five years as Bureau member.
These roles have been voluntary, limited
in term, and which I perform alongside my
daily professional engagements.
I am a Bulgarian patent and trademark
attorney, Bulgarian attorney at law,
European patent attorney, European
Trademark and Design Attorney, and
partner of Bulgarian law firm Interius. Most
importantly, I am a mother of two wonderful
grown-up children. Trying to combine all
these roles, I am no exception from the other
IP professionals.
It takes a lot of passion to reconcile these
different roles and social responsibilities;
none of us could do it alone. We are grateful
to our teachers for all lessons learned – easy
and difficult ones.
We work together with our partners and
colleagues from all over the world to best
protect and help our clients, across different
cultures, jurisdictions, and time zones. We
discuss, negotiate, and fight. Sometimes
we win, sometimes we lose, and every
time we get a little bit stronger. This is the
daily routine for IP lawyers. For us, women,
the choice is not whether you pursue a
complicated case with the help of a man, or
of a woman. As long as you have a reliable
and trustworthy partner to work together
with, you will be strong and successful. My
experience shows that the reverse is also
correct - male colleagues are looking for
professional support – men or women, and
this is what matters. However, has it always
been like that? Is it like that all over the world?
Maybe not, as this publication is launching
only now. Maybe women still need to share
their success stories to encourage others.
All women may still need to express the
challenges they experience and get inspired
by how others face them and deal with them.
Northon’s Media, PR & Marketing’s
publication“, Women’s IP World,” is a
platform. A platform for women to
demonstrate their achievements, to learn
and get a shared creative impulse from each
other. It is also a platform where women
could receive recognition for their work
showing their professional experience and
their unique personalities.
AIPPI is happy that this publication is
launching at the occasion of the AIPPI World
Congress in London and that we could
support this endeavour.
AIPPI is an organisation which was once
regarded as a “men’s club.” These times are
long gone. Our bylaws explicitly require
gender diversity for all positions in all the
institutional bodies of the association.
Therefore, the current Bureau comprises
of 15 members, 7 of which are female,
including the President and the Secretary
General. Women mostly do the day-to-day
work at the General Secretariat of AIPPI.
The composition of our membership, as
well as our committees, (which are the
cornerstones of AIPPI), show true balance
and commitment of both men and women.
This makes this organisation one of the most
influential and respected non-governmental
IP organisations in the world. We are all
engaged in this volunteer work in the best
way we can be.
Diversity and equal rights need to be
practiced in our daily work environment,
not only in the IP profession. Tremendous
progress has been made, and we see it all
around; however, there are things to be
improved. I am therefore confident that this
publication will find an interested audience
in the IP World.
What keeps us all together
is the shared passion for
what we do. We will be
successful if we continue
sharing it. Share it with us!
Genius,
Creativity, and
Endurance:
all in the long journey of women’s recognition.
The ‘names’ of our ancestors of which we
are aware of are disproportionately male
names, remembered, regardless of the
specific reasons why.
Of course, all of us know the names of some
powerful women; for example, empresses
or queens, and the names of a few
outstanding creators, poetesses, and artists.
However, the more we go back through
the centuries, the more difficult it is to find
memories and traces of the contribution of
women to the development of knowledge,
inventiveness, and understanding.
As discussed by Renata Righetti Pelosi, President of AIPPI
www.aippi.org
All along with the entire human history
we women were always, approximately,
half of the total number of human beings.
However, recognition of the female
contribution to the development of culture
and society has always been neglected.
No need to recall Bertoldt Brecht to
recognise that most of the ‘History,’ as
we know it, did not report the names of
those who were not so powerful, women
or men, but against ‘the other side of
Heavens’ damnatio memoriae worked
even more efficiently. Too often, when a
female scientist or scholar proved herself
to be outstanding, the social and political
environment cut her off.
An example is the well-known case of
Hypathia, the very first notable woman
in mathematics and astronomy, who
was murdered by insurgent Christians, in
Alexandria, Egypt, during the second half
of the IV century AD. Furthermore, let us
remember the thousands of women who,
many centuries later, were burnt at the
stake in Europe and America as witches and
who were probably the only healers in their
communities who took advantage of the
traditional female knowledge of herbs and
plants.
Closer to our times and moreover, as we
are mentioning names, it is essential also to
remember the name of Maria Sklodowska.
She was twice a winner of the Nobel Prize
for two different scientific fields; her name
04 05
05

has almost been forgotten as she is better
known worldwide under her husband’s
name, Curie, instead of her own!
Notwithstanding all the difficulties still
existing, we must reecognise that thanks
to the fighting and endless efforts of
many women all over the world, most
countries now acknowledge women’s skills,
capacities, and equal rights; it is at least
partially, achieved.
We can see it in
any field, and the
IP world is not an
exception.
The number of women in all the professions
linked to IP has significantly grown in less
than half a century, which is a period so
short that several of us are witnessing the
process and the actual changing in our own
professional lives.
Nowadays, in most jurisdictions, there are
no longer rules limiting the enrollment/
election/activity of female Judges, Lawyers,
Patent and Trademark Attorneys, IPO
Directors, Examiners, Researchers, etc. As a
consequence, also, the number of women
reaching top positions in their respective
fields has increased very much. It brings a
more favourable ambiance from the very
beginning for any woman in her career in IP.
Looking back at my experiences, I
am certainly not the only one of my
generation who was often approached as
the “secretary,” at most the assistant, of a
male colleague when meeting clients or
associates. We do not hear this much of
younger female colleagues. It hopefully
means we have progressed.
Sometimes in private practice, it is more
difficult to reach the highest positions than
in the public sector because their rules
must always be applied, and the selection
and promotion process is more ‘neutral’
and objective. However, of course, many
women presently are at the top of IP Firms
in many jurisdictions.
IP Associations
often take a
similar attitude to
public sectors.
Within AIPPI, for instance, Art.1.5 of the
Statute states that the Association “shall
not discriminate, especially concerning
religion, race, national origin or gender.”
The above is an obvious principle
considering its International vocation and
to implement it the Nominating Committee
and the Bureau are always very careful to
suggest for any election members with
different geographical and professional
backgrounds as well as gender diversity.
The implementation of this diversity
principle has allowed AIPPI (over the last
few years) to substantially increase the
involvement of women in all the Committees
as well as, for the first time after more than
a century, to have at an international level a
female Reporter General, Secretary General
and President. The same principles apply
to the National and Regional Groups, that
are the backbone of AIPPI, and the numbers
of female delegates and presidents of
Groups increases every year. Also, other
“sister” Associations have been, and are
still going, through a similar process of
renovation and modernisation. It is not a
completed process as yet and AIPPI, like
other IP Associations, support networking,
mingling and exchanging experiences and
opinions among its female members.
Many women are also
IP owners in their
own right or because
of their position
within Companies.
Unfortunately, I am not aware of any study
nor statistics on this specific area of IP.
Perhaps someone knows better or would
think of conducting studies?
Even then the vast majority of IP owners are
companies and consequently any statistic
will not have a definite significance
Recently we received
some interesting,
good news
concerning inventors’
gender, from a
survey conducted by
WIPO among PCT
applications updated
to 2018.
It shows that last year, 33% of all filed
PCT applications mentioned at least one
woman among inventors and that 17%
had woman/women as inventors. These
numbers are certainly not good enough
but show that the trend of women being
patent inventors is continuously increasing
over the last monitored years (2000-2018).
Women only inventors increased by 54,5%
in the previous two decades, and invention
with a woman among inventors increased
by 65%.
The other good news is that the increasing
rate seems to be accelerating.
It is interesting to remark that, not
surprisingly, in the field of Pharma, Biotech
and Biology, Food Chemistry and Organic
Fine Chemistry, the majority of inventions
have at least one woman among mentioned
inventors.
It is very appropriate in this connection
to mention that in June 2019, in Vienna,
EPO honoured the winners of the
Inventor Award 2019. For the first time, an
inventor won in two categories: Lifetime
Achievement and Popular Prize and the
winner was Margarita Salas Falgueras
for her inventions on DNA amplification
for genomics. A considerable achievement,
indeed!
Unfortunately, we do not have any data
on creators of trademarks/logos or design,
though I am quite sure that the creativity
of women is very present, strong and
influential in those sectors. In my personal
opinion, women always have a better taste
and the finest touch on aesthetical works
and activities.
To conclude these few lines, I wish to share
with you a personal dream and hope.
Despite any reasonable likelihood, I like to
hope that exclusive rights granted to cooks
who invented new recipes - according to
the so-called Sybaris Patent, from the Greek
colony in Southern Italy, dating to the VII
Century BC - were occasionally granted to
female cooks too.
The hope is that
younger women
in IP, but not only,
could witness a
better tomorrow
that – resounding
Kahlil Gibran – ‘We
cannot visit, not
even in our dreams.’
We need to ask - are we driving important
potential innovators and innovations out
of business? Are we losing or delaying
innovations because half the population
doesn’t see the Innovation Economy as
welcoming or a realistic setting for their
talents? How do we entice them to stay?
Consider career growth – promotions, pay
equity, bonuses, and new job opportunities.
Add in a dose of business growth and
success. Ponder funding a startup. How about
attracting investment in an existing business?
Have you looked lately at board seats? C-level
executives. Market leaders. Acknowledged
experts. Thought leadership. Even mentions
in the media and social media? Alternatively,
as we have been calling them, the 6 “C’s” –
Cash, Career, Customers, Credit, Credibility,
and Community. These are just some of the
places and opportunities where women are
left behind or left out. Starting at the top:
– Deloitte looked at nearly 7,000 companies
in 60 countries. In 2017 women held 15
percent of all board seats globally, up from
12 percent of board seats just two years
prior.
The Importance of
Women in
Innovation
Bobbie Carlton, Founder, Innovation Women
www.innovationwomen.com
Gender equity discussions and initiatives in recent years may
feel trendy, and momentum may seem like it is on our side,
but we still must face sobering statistics when it comes to
women in business, women in tech and women in innovation.
– According to Fortune, women held 15.7
percent of board seats at Fortune 500
companies 15 years ago. Today, women hold
25.5 percent of those seats.
– The number of women running Fortune
500 companies is at a record high; there are
33 female CEOs among the Fortune 500 (with
presumably one CEO per business) in 2019,
up from 24 in 2018. This is just a little over
6 percent. However, female CEOs tend to
leave quicker than their male counterparts,
so we could see these numbers drop quicker
than we’d like. Women stay for less than 4
years, where the average male CEO stays for
5 years.
Some women leave these positions, or
the positions that could succeed the top
positions, to start their own companies.
They often cite stalled careers, pay
inequities, and a lack of meaningful work
(a big issue for women who work or want to
work on the forefront of innovation). Worst
case, they point to unsafe, abusive, or just
plain uncomfortable work environments.
If you only look at funding, the numbers for
female entrepreneurs are just as or more so
dismal:
– According to data from Pitchbook and All
Raise, in 2018, 482 female-led U.S. companies
raised $2.88 billion, or 2.2 percent of all
venture money invested. The number of
deals by female founders is growing, but the
percentage of the overall amount remains
stagnant due to the increase in so-called
mega-deals. One mega-deal example, Juul
($12.8B), represented $10B more than all the
female founders in the U.S. combined.
So, forget startups, because high growth
companies often need outside investment in
order to scale. Let’s look at small businesses.
– A 2016 Amex OPEN report revealed there
were 11.3 million women-owned businesses
in the U.S., and those businesses generated
$1.6 trillion in revenues.
– The same report showed that women
start small businesses at a rate five times
the national average, or about 1,000 new
women-owned businesses every day.
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07

– Women apply for fewer and smaller small
business loans, but when they do receive
loans, it’s at a higher annual percentage rate
(the actual yearly cost of funds over the term
of a loan.)
– Women-owned businesses account for
only 4 percent of the U.S’ business revenue,
and women entrepreneurs employ fewer
workers - about 8 percent of all workers.
Are women focusing on small businesses
that don’t need outside investment because
they know their chances of receiving funding
are so low? Almost two-thirds of women selffund
their businesses or bootstrap. Are they
hamstrung by a lack of working capital, or are
they taking other paths to success? Seventyone
percent of women business owners said
their business was profitable according to
Guidant Financial and LendingClub’s 2019
Small Business Trends report.
Outside financing can make the difference
when it comes to the survival of your startup
or small company. Twenty percent of small
businesses fail in the first year, and half fail
before five years – why pile on the challenges
when you might be able to focus your energies
on starting and growing a business that
doesn’t need funding or investment?
More and more data are surfacing that points
to the existence of diverse teams as a way to
speed success, to solve problems faster, and to
produce fresh innovation. (Note that diversity
is not just gender-oriented but involves race,
economic strata, sexual-orientation, and
more.) Two heads are better than one when
it comes to innovation. Why? Moreover, why
women in particular?
When we talk about innovation, we’re often
talking about new products and processes.
When conceiving and designing these, it’s
always helpful to test theories and prototypes
on your target market. In addition to products
designed specifically for women, are we ready
to write off the opinions of half the potential
market? Making sure women are represented
on your team helps you design with them in
mind. Having women on your team speeds
the overall process.
Also, it’s not just the teams; it’s the team
leaders. Have you ever wanted to offer up a
new idea or concept and rejected the thought
yourself before you shared it with others?
Maybe you didn’t share your idea because
you were fearful of rejection, scarred by
repeated and persistent rejection? According
to Sylvia Ann Hewlett, Melinda Marshall and
Laura Sherbin, writing in the 2013 article “How
Diversity Can Drive Innovation” in the Harvard
Business Review, “Without diverse leadership,
women are 20 percent less likely than straight
white men to win endorsement for their ideas;
people of colour are 24 percent less likely;
LGBTs are 21 percent less likely.”
Head spinning yet?
The odds are indeed stacked against us. Or
are they? Perhaps it is time to throw aside the
scary negative data and focus on results:
– According to data from First Round
Venture Capital’s 10-year Project, female
founders outperform their male peers by
63 percent in terms of value created for
investors.
– The Small Business Association concluded
in 2017 that venture firms that invested in
Women-Led Businesses (WLB) saw an
improvement in their fund’s performance.
– According to David Rock and Heidi
Grant in an article in the Harvard Business
Review, various studies point to companies
with more women being more likely to
introduce radical innovations, and “cultural
diversity is also a boon to innovativeness.”
If results are better for female founders and
diverse teams, why are we still so far behind
and so far away from gender-parity? The World
Economic Forum estimated in 2018 that at the
current rate of progress toward equity in pay,
it will take 202 years to reach parity. (Progress
– in 2017, the estimate was 217 years. However,
this was a significant jump from the previous
year – in 2016, the estimate was “only” 170
years.)
How do we move beyond the scary data and
the challenges represented by the numbers?
1) Start by examining your biases – both
conscious and unconscious. When we say
entrepreneur, who do you see? When we say,
scientist or engineer? Lawyer? Doctor? Nurse?
(Biases cut both ways.) What do they look like
in your mind’s eye? We all have biases formed
by our life experience. Know your bias. How do
you treat the team? Who is shouldering extra
office work and chores? Often, it’s the women.
2) Think about how you inform and influence
the unconscious bias of others. Who do we see
as thought leaders, experts, and influencers?
Often these are the speakers at conferences,
the expert sources in the media and the (very
visible) executives? Visibility drives business
opportunities and shows the next generation
what a leader looks like. Don’t turn down that
speaking opportunity. Don’t assume that only
the (more-likely male) CEO can speak for your
company. Stand up and be counted. Mentor.
Speak to classes. Show the flag. Also, when
you can’t take the stage, don’t automatically
pass the opportunity off to one of the usual
suspects – look to the women on the team,
even if this might be their first time on-stage.
(You may wish to consider speaker training or
specifically targeted practice opportunities.)
3) Consider family-friendly policies for
everyone. Flexible schedules. Working from
home. Paid leave for both maternity and
paternity. When men have flexibility, their
partners have options that could include
staying with your company where before
they might have dropped out or pulled back
from their careers. (This applies to same-sex
couples too.)
4) Expand your thinking. Don’t stop at gender
equity. Diversity and inclusion should be
our approach. While white women have
challenges in the workplace, the challenges
multiply when you bring women of color into
the fold. Pay equity gets farther and farther
away. So diversity is more than gender and
race – consider economic status, physical
abilities, national origin, political beliefs, and
sexual orientation too.
5) Have a goal. Track and measure your
progress toward your goal. If we want to
have an impact, we need to know where we
are starting (setting a benchmark) and what
success looks like.
6) Don’t just focus on the top layer. Think long
term and consider in-depth succession plans.
It’s tough to move up when there’s no one to
backfill what you do.
7) Don’t settle. Our goal should be 50/50 when
we look at gender equity. We should receive
equal pay. Women should sit on boards, lead
companies, and countries.
8) Consider legislation to move stalled efforts
forward. No Manel Zones. Board equity.
In 2018, California passed a bill requiring
companies to have a minimum of one on their
board of directors by the end of 2019. This is
modeled on the requirements from European
countries. At the end of July 2021, companies
with five-person boards will need two women
and boards with six or more will need three.
It’s important to us all that we tap the
entire population if we want to make real
and timely progress toward the biggest
challenges of our age – disease, climate
change, privacy, an aging population,
racial and gender inequality, ethical use of
artificial intelligence, income inequality,
hunger, clean water…the list goes on. Half
of us can’t sit on the sidelines and hope the
other half come up with the answers.
Bibliography:
https://www.weforum.org/projects/closing-the-gender-gapgender-parity-task-forces
https://www.sba.gov/content/venture-capital-social-capital-andfunding-women-led-businesses
https://hbr.org/2016/11/why-diverse-teams-are-smarter
https://s3.amazonaws.com/mentoring.redesign/s3fs-public/
SCORE-Megaphone-of-Main-Street-Women%E2%80%99s-
Entrepreneurship-Spring-2018_1.pdf
https://www.urban.org/research/publication/competitive-and-
special-competitive-opportunity-gap-analysis-7a-and-504-
programs/view/full_report
https://www.fundera.com/blog/2017-spotlight-womenentrepreneurs
https://fortune.com/2019/01/28/funding-female-founders-2018/
https://www.catalyst.org/research/women-on-corporate-boards/
https://www.cnbc.com/2019/05/16/the-number-of-womenrunning-fortune-500-companies-is-at-a-record-high.html
https://www.cnbc.com/2019/05/16/the-number-of-womenrunning-fortune-500-companies-is-at-a-record-high.html
http://10years.firstround.com/
https://www.guidantfinancial.com/small-business-trends/
women-in-business/
https://www.forbes.com/sites/allbusiness/2019/05/04/womenentrepreneurs-self-fund-new-business/#7751e732256e
I P L A W F I R M
PROFILES
&
ARTICLES
Sponsored by
08
09

GHANA
Name: Sarah Norkor Anku
Africa
Law firm name:
Anku.Anku At-Law
Country: Ghana
Position: Senior Partner &
Intellectual Property Consultant
Website: www.ankuatlaw.com
Sponsored by
Sarah Norkor Anku is an astute legal
practitioner, intellectual property expert,
Lecturer and Public Speaker with decades
of experience covering Intellectual
Property (IP), in particular, Patents,
Trademarks, Industrial Designs, and IP
Assets Management. She is currently the
Senior Partner and Intellectual property
Consultant at one of the leading law firms
in Ghana, Anku.Anku At-Law.
Born in Accra, she spent her formative years
in Ghana. She holds an LLM in Alternative
Dispute Resolution (ADR) from the University
of Ghana, and a Master’s Degree in Intellectual
Property from Africa University, Zimbabwe, and
MSc. Food Chain Management from Imperial
College of Science, Technology, and Medicine,
University of London.
She is the first President of Intellectual Property
Network - Ghana (an IP Think Tank and
Advocacy group) and has represented Ghana at
different fora on matters relating to Intellectual
Property Rights. She was the first Vice-
Chairperson for the 18th and 19th Sessions of
the Standing Committee on the Law of Patents
of the World Intellectual Property Organisation
(WIPO).
Sarah has served on numerous committees
of the African Regional Intellectual Property
Organization (ARIPO) including the Working
Group on the Improvement of ARIPO Protocols
Relating to Industrial Property, Staff Affairs
Committee, Administrative Council and
Technical Committee on Industrial Property.
Sarah Norkor Anku began her working life
as a Research Assistant and National service
person at Water Research Institute of CSIR in
Ghana and subsequently with the (then) Food
and Drugs Board as a Regulatory Officer. After
being called to the Ghana Bar, she progressed
to Lawfields Consulting as an associate, and
then to the Registrar General’s Department
as an Assistant Registrar General and a State
Attorney. She also worked with the Danish
Technological Institute as a Key Expert and IP
Consultant on the ACP-EU-TBT Programme in
the United Republic of Tanzania.
Sarah was recognised for her contribution to
the field of IP and organisations at the just
ended Litigation & IPR Gorilla conference.
The event which served as a platform for
professionals in the field to chart the course for
IP practice saw Anku.Anku At-Law, where Sarah
is a senior partner, being awarded as one of the
Top 50 Legal/IP companies globally.
Under the leadership of Sarah, the Intellectual
Property Network – Ghana, in collaboration
with the Registrar-General’s Department,
organised the maiden National Intellectual
Property Forum, and two subsequent
successful Forums. She also led a team,
comprising some selected members of staff to
establish a procedural framework for the grant
of Utility Model Certificates in Ghana, which
led to the grant of Ghana’s first Utility Model
Certificate.
Sarah has contributed significantly to the
upgrade of the workflow of the Patent
Application Process at the Ghana Industrial
Property office, developing a manual for Patent
Administration in Ghana, and training support
staff to facilitate Patent Administration.
Sarah is passionate about using her expertise
to support businesses to grow through the
effective management of their Intellectual
Property. She is a leading voice on IP in Africa
and currently leading a campaign to raise
public awareness on IP practice and its role in
the economic development of countries. She
blogs regularly on the subject via her social
media handles and also on
www.ankuatlaw.com.
10 11

Being Intellectual Property Rights,
Trademarks are negative rights, as
against positive rights created by other
property rights. Therefore, where a
party to a Trademark dispute is found
not to have a right, that party cannot
prevent others from freely using the
Trademark.
EXCLUSIVE RIGHTS OF
TRADEMARKS
Trademarks are generally defined as marks
which distinguish the goods and services of
one enterprise from the other. They are assets
of value to businesses and can further be
exploited through licences. Businesses invest
significant resources in their Trademarks and
take steps to protect such Trademarks from
being infringed by competitors. Trademark
protection, like any other Intellectual
Property Right, is territorial in nature; thus,
protection in one country does not guarantee
protection in another. In this regard, it is
not surprising that businesses aware of the
value of their intellectual property develop
strategies to manage their Trademarks.
Strategic management of Trademarks include
strategies for protection, exploitation, and
enforcement of their rights.
The rights acquired by a Trademark owner
confer the right to exclude others from using
the mark on the same or similar goods and
services without the consent of the rights
owner. Despite the exclusive rights conferred
on a Trademarks owner, it does not obtain
a monopoly. As aptly stated in a plethora of
decided cases, “[I]intellectual Property Rights
are not monopolies.”
Trademark rights may be obtained through
registration or the common law right of
use. Where there is a conflict in ownership
of a Trademark between parties, municipal
laws provide the answer. Some jurisdictions
apply the first to file system as against the
GHANA
TRADEMARKS
EXCLUSIVITY:
THE HAMPTA CASE 1
As discussed by Sarah Norkor Anku, Senior Partner at
Anku.Anku At-Law - www.ankuatlaw.com
Businesses thrive on strong brands and invest significantly
in creating and sustaining brand leadership. A brandmark
is a creation of the intellect of an individual or a group of
individuals for the business. Such marks ought to be recognised
and protected, oftentimes as Trademarks. Intellectual property
rights encourage creativity by protecting owners of intellectual
property from copying and in the case of trademarks, from
Trademarks squatters, among others.
first to use common law rights. The first to
file system confers the right to the mark to
the first applicant who files an application
with the relevant statutory body. On the
other hand, the first to use system confers the
right to the first party to use the mark. Most
jurisdictions follow the first to file system with
its incidental challenges such as the menace
of Trademarks squatters.
THE HAMPTA & SONS CASE
The Ghanaian case of Hampta & Sons vrs Afua
Konadu & Anor, currently on appeal, reveals
the challenges of the first to file system as
against the first to use, and the misapplication
of certain principles of Trademarks law.
Municipal laws and common law confer the
negative rights of excluding others from using
the registered Trademark, As against positive
rights created by other property rights. In
the case of Campomar Sociedad, Limitada v.
Nike International Ltd, the Court cited Buckley
LJ in Lyle and Kinahan Ltd, where Buckley LJ,
“…pointed out that the only right conferred by
registration was a right to prevent others from
using the trademark as a mark for their goods.”
Trademarks Act, 2004 (Act 664), as amended,
governs Trademarks in Ghana. The Act confers
on a Trademark owner the right to prevent
others from using the Trademark without
authorisation of the registered owner. This is
particularised in Section 9 of the Act. Section
9 (2) is to the effect that it is only a registered
owner of a Trademark who has a right to
institute court action against any person
who infringes the registered Trademark. In
Aremu v. Lilaram Thawards , it was held that
“A person is only entitled to have absolute and
exclusive right to the use of a trademark if a
certification of registration in respect of the
trademark has been issued to him. In this case,
since no certificate had been issued in respect of
the trademark, the plaintiff’s action against the
defendants was not maintainable.”
BRIEF FACTS OF THE CASE
Both the Plaintiff, HAMPTA, and the 1st
Defendant, Konadu, trade in spices at
Kumasi, the second-largest city in Ghana.
While the HAMPTA trades in spices under
the unregistered Trademark MINAZEN, the
Konadu trades in spices under the Trademark
REMIE. In July 2018, HAMPTA, decided to
register its mark MINAZEN at the Trademarks
Office, 2nd Defendant, only to realize
that Konadu had applied to the Office to
register the mark in her name. Based on the
application for registration, Konadu solicited
the help of the Police to harass the HAMPTA
officials. All efforts to restrain her from these
acts of unfair competition failed. HAMPTA,
therefore, resorted to the High Court of
Ghana for redress. While the substantive
matter was pending, Konadu filed for an
interlocutory injunction against HAMPTA.
Subsequently, the trial judge injuncted both
parties from using the mark MINAZEN even
though Konadu had stated in her processes
that she does not trade in spices with the
mark MINAZEN. The judge stated in his
interlocutory ruling dated 26th October 2017,
on page 11, as follows:
“I do not intend to go into the merits of the
conflicting claims of the parties, the vexed
question of who owns the exclusive right to
the MINAZEN trademark will be determined
after a full trial. What is apparent is that
none of the parties has an exclusive right
to the use of the MINAZEN trademark, as
the applications of both parties are yet to
be determined by the Registrar General’s
Department. Indeed, the rights of parties
could only be determined after parties have
led evidence in support of their case, and all
the pieces of evidence have been evaluated.
It will, therefore, be prejudicial to conclude
that a party, particularly the applicant, has
a right to which ought to be protected…
In conclusion, the judge held on page 12
of his ruling that, “Both the applicant and
respondent are, however, restrained
forthwith from using the MINAZEN
trademark to package their products and
subsequently marketing, distributing and
selling the same…”
ANALYSIS AND
CHALLENGES
Enforcement of Trademarks hinges on the
municipal laws of each State. In Mattel Inc v.
3894207 Canada Inc 2006 SCC 22 [Canada],
the Supreme Court of Canada cautioned, in
the case of the enforcement of a registered
Trademark, that “[f]airness, of course, requires
consideration of the interest of the public and
other merchants and the benefits of open
competition as well as the interest of the
trademark owner in protecting its investment in
the mark. Care must be taken not to create a zone
of exclusivity and protection that overshoots
the purpose of trademark law. The purpose of a
trademark is to create and symbolize linkages”.
The Protection Against Unfair Competition
Act of Ghana, 2000 (Act 598) ensures that
intellectual property rights are not abused to
the extent of creating monopolies.
In addressing matters of trade, one cannot
lose sight of issues relating to competition as
the propensity of some players of the market
to apply unfair practices to compete unfairly.
It is for this reason, among others that the law
on Protection Against Unfair Competition
seeks to regulate fair practices in trade,
including Intellectual Property Rights.
In the case of HAMPTA & Sons, did the judge
err in law by injuncting both parties from
using the mark “MINAZEN”? Did he overshoot
the purpose of Trademarks law? Was he fair to
the merchant who had acquired a reputation
in the mark through use even though not
registered? Was his decision in the interest of
promoting trade?
As stated by Oliver Wendell Holmes Jr.:
“The prophecies of what the courts will do
in fact, and nothing more pretentious, are
what I mean by the law”… the law lies in the
bosom of the judge.
Konadu was the first to file the mark
“MINAZEN,” even though she does not use
the mark, while HAMPTA is the first to use the
mark and the later (in time) to apply to the
Trademarks Office for registration.
Konadu had emphatically stated that she
does not trade in the mark “MINAZEN.”
Therefore, it surmises that an injunction on
both parties was an injunction against HAMTA
only, which was busily trading in products
bearing the mark while overlooking the
adverse effect on the value of the brand. One
would have expected that the judge would
have considered section 9(2) of Act 664,
which is to the effect that only a registered
owner of a Trademark can initiate an action
in infringement and refused the application
of Konadu. Yet, he based his decision on a
mere application for registration, despite
citing the Aremu case supra. Again one would
have expected the Court to have frowned
on such acts of unfair competition, where a
competitor squats on another’s Trademarks
just because the user of the mark had not
registered it.
In this case, Konadu had no right in law to
initiate an injunction application against
HAMPTA to prevent it from using a mark that
it had traded in for many years, particularly,
where the judge had found that both parties
had applied for the registration of the mark
‘MINAZEN,’ but none had been issued a
certificate of registration. Surprisingly, despite
his findings, the judge concluded without
any legal basis, that both parties should be
injuncted from using the mark even though
none of the parties had the right to prevent
the other from using the mark, as provided in
section 9(1) of the Trademarks Act, 2003 (Act
664), as amended, and to institute a court
action against the other for using the mark in
the first place, as provided in section 9(2)(a)
of the Act and as decided in the Aremu case
supra.
CONCLUSION
The rights conferred on a Trademarks owner
is settled; however, the interpretation of the
term “Exclusive Rights,” has been misapplied
in some cases. There are a plethora of cases
that expatiate the meaning of the term as
negative rights, that is, a right to prevent
others from using a registered Trademark
as against positive rights of use. To avoid
occasional misapplication of some of the basic
principles of Intellectual Property Rights, it is
highly recommended that businesses take
steps to develop IPR management strategies
that include seeking appropriate legal
protection in markets of interest.
1 HAMPTA & SONS VRS AFUA KONADU (TRADING UNDER THE NAME & STYLE AS REMIE FOODS VENTURES) & THE REGISTRAR-GENERAL (Suit No. P/OCC 02/2017)
1 See Kirki AG v. Ritvik Holdings Inc 2005 SCC 65 [Canada]; DRISTAN Trademark supra; Campomar Sociedad, Limitada v. Nike International Ltd [2000] HCA 12 [Australia]
2 (see Glaxo Group Ltd v. Dowelhurst Ltd [2000] EWHC Ch 134 [UK]; DRISTA Trademark [1986] RPC 161 (SC) [India]
2
(1964) GLR 253-256
12 13

CAMEROON
Name: Mary Concilia Anchang
Law Firm name:
Onambele Anchang & Associates
Country: Cameroon
Position: Managing Partner
Website: www.oaalaw.cm
Mary Concilia Anchang is married and a
mother of two wonderful children. Called
to the Cameroon Bar in 1993, she offers
a vibrant multicultural, international,
bilingual, and bijural law practice
experience. Managing partner at Onambele
Anchang & Associates (OAALAW) she has
demonstrated consistency and dedication
in 26 years of advocacy.
A full-service corporate law firm, OAALAW
serves a broad range of businesses from
various industry sectors. OAALAW offers
loyalty, diligence, compliance, and optimum
satisfaction. One of Cameroon’s most
respected female lawyers, Mary is one of the
most sought after contemporary lawyers in
Cameroon and the Central African region.
She is passionate, vibrant, and very engaging.
Her peers often revere her resolve to address
challenging matters. Her brilliance and a keen
eye for detail have earned her great recognition
from her clients.
In 2016 OAALAW won the “AI AFRICAN
“AWARDS of Excellence.
Mary is a pioneer African IP lawyer, accredited
with the African organisation of Intellectual
& Industrial property (OAPI) since 1994. Her
IP practice spreads into 17 countries, within
French-speaking Africa.
In 1998, Mary was appointed to advise the
Cameroonian Association of ‘Inventor’s
and Innovators on ‘’HEPASOR,” a cure for
hepatitis, Mary founded “The Foundation
for the Promotion of Innovation /Inventions
and Artistic Designs” (FPI) to promote local
research and the transfer of technology. FPI
and OAPI Inventions/Inventors participated
at the International Exhibition Fair (INPEX)
with Dr. Nakammatz, the inventor of Viagra in
1999 at The BBC Tomorrow’s WORLD London
Exhibition Fair. FPI received an award and Mr.
John Trevor the inventor of the “Touch lamp”
visited FPI. Furthermore, FPI and OAALAW
accompanied the invention of VANHIVAX, a
therapeutic vaccine for HIV/AIDS.
In 2006, Mary was appointed as arbitrator and
court member of the International Court of
Arbitration, at The International Chamber of
Trade & Commerce (ICC) in Paris. She became
the first Pioneer African Female appointed to
this office since its creation from 2006-2010.
A founding member of the Cameroon National
Committee of The International Chamber of
Trade & Commerce (ICC) she presided the IP
and Arbitration commission from 2004-2014
and was a member of the same in Paris until
2014.
In her finest hour, in 2015 coupled with her
legal practice she became The Founding
Chair of “The AFRICAN CHAMBER OF TRADE
& COMMERCE” (ACC). During this initiative,
Mary pledges to bring her experience and
knowledge into a project that she is passionate
about. “Institutional Advocacy for ‘Africa’s
Socio-Economic Development.”
She is convinced of the need to promote IP
asset ownership in Africa for improved wealthcreating
entrepreneurial activities. She believes
validating African inventions and innovations
derived from R&D and appropriation of
the rich, diverse, mutating, and fascinating
cultural heritage of Africans is mandatory to
conquering new markets.
In 2018 ACC organised the 1st International
Forum on the Production and Transformation
of Cotton, Textile & Accessories (FICOTA 2018)
with the 2nd Edition in 2020. The Cotton,
Textile, Accessories, and Fashion sector in Africa
are a vision ACC works to optimise for wealth
creation and job opportunities.
(www.africanchamber-abo.org)
In 2018, Mary was recognised amongst 100
of the finest professional women in a book
titled “WOMEN PIONEERS IN DISPUTE
RESOLUTION” by Arbitral Women.
Mary is also an active member of INTA,
ARBITRALWOMEN, AMOAPI, FPI, etc.
When Mary isn’t working, she enjoys travelling,
music, dance, sports, and supporting charities
in any way she can.
14
15

IP FUNDING;
A KEY TO ENTREPREUNEURIAL DEVELOPMENT
THROUGH IP ASSET OWNERSHIP IN AFRICA
It is pertinent to note that Africa’s
development requires a substantial financial
boost.
However, African markets and economies
cannot develop if Africans are not owners
of their intelligence in talents, skills, and
resources.
Also, that, the effort required to make
this happen does not only depend on the
understanding or appreciating of the fact
of Africa’s richness in potential, as is often
proclaimed.
The burden lies with the continent, actually
seeing that this translates into Africans being
equally positioned to take proper advantage
of their riches and resources for their wellness.
Wealth creation and job opportunities cannot
be imagined nor imposed. The continent
needs to sort, organise, and see that what is
happening is real.
Written by Mary Concilia Anchang, Onambele,
Anchang & Associates - www.oaalaw.cm
R&D in Africa
In the past three decades of law, business
and comparative IP practice with little
compliance mechanism observed, I have
observed isolated researchers in Africa and
also universities with recognised research
units, make free publicity of their discoveries
and know-how without consideration for
the ownership nor money value of their
intelligence worth.
A considerable amount of training and
research efforts through workshops and
seminars have been going on in Africa in the
past decades; even so, with minimal impact
on the ownership aptitude of Africans - of
their intelligence and virtual IP assets.
At these seminars, resolutions are reached;
however, implementation falls short. Right
after these efforts, the institutions and
concerned actors continue as if they have no
obligation to undertake strategies; to either
implement the resolutions or enforce policies
to fund research for improved performance in
the field.
CAMEROON
Having travelled vastly through several parts of the world, I try to use
my professional experiences to influence competitive business habits
and policies, as the need occurs without complex nor bias. My goal is to
contribute towards building a highly attractive business environment for
the economic empowerment of African businesses and institutions and also
push the much-needed gender agenda for African women. The world needs
to be safe. However, extremes in the rich and poverty gaps between the
tenants of the earth do not advance this debate.
In Africa, given the particularities and
multicultural background of the people, the
need to own virtual assets seems strange or
a utopia. It has not been a tradition of the
people.
This leaves the ugly impression that IP asset
ownership is a luxury. This may be interpreted
as selflessness, hospitality, charity, or
negligence. The reason may also sometimes
be explained or excused by ignorance.
However, such arguments can no longer
prevail in the 21st century. The world order
has changed. Value is in money and capital or
assets ownership.
Nevertheless, Africa need not be
discouraged. With the increasing growth of
African markets, and the continent acclaimed
as one of the world’s “most attractive and
competitive” as well as an exponential
consumer population. By 2060 it obliges
innovative ways of doing business and brings
great hope to the continent of abundant
sunshine and rain.
There is a need to adopt
appropriate strategies and
policies to fund African
research. The time is ripe
and Now.
Less than 20 percent of the technology used
in Africa is not African owned. Worse still, it is
not free for transfer. It is expensive.
If Africans do not own IP assets, they may
never make headway in capital and industry.
Most Sub Saharan IP offices and markets
depend on a significant IP importation market
in products and services to survive in business.
This weakens the economy. Whereas, as
IP asset owners, African businesses could
witness increased exportation to influence
market standards and statistics in brands for
goods and services.
While it is evident that old money belongs
to asset owners of yesterday, more virtual
assets are yet to be owned today. If targeted
by Africans, the scope of intelligence is
immeasurable. The establishment may be
accused of capitalism. However, the only way
Africa can make an entry into new markets is
by owning their intelligence. This provides
added value and competitiveness in the
marketplace. African businesses must be
seen to own more and more titles in designs
and models, trademarks, patents, labels,
geographical indications, etc.
When this happens, African’s can make an
exciting inroad in the IP marketplace.
As such, an opportunity for African IP experts
to sort and export IP services abroad.
Funding IP in Africa will open a floodgate
of business ventures in a multitude of
entrepreneurial activities for jobs and
welfare creation in Africa through
sustainable value chains.
Funding for
R&D
Policymakers must oblige
the budgets and efforts to
finance R&D.This requires the
involvement of specialists and
experts. Funding will facilitate the
creation of prototypes needed
to validate innovative ideas and
discoveries for new investment
opportunities and potential
markets.
While it is evident that the
establishment only recognises
conventional articles and concepts for use,
the urge for new concepts and markets
remains unequivocal. However, the burden to
change the order of things rests irrevocably
on efforts to be made by the aspirant.
(Africans)
Once an unconventional idea meets
the recognised norms as internationally
approved, the value becomes evident and
open to the world market rules for pricing
within the supply and demand rules.
This involves a lengthy and very costly
process prior.
The facts hitherto argue in favour of the
unequivocal need to adequately fund Africa
research. The paradigms and impact on
Africa’s development potential will shift
upwards if Africans own at least 30 percent
of their intelligence in IP assets. By doing
so, they should apply adapted solutions to
African problems.
R&D in Africa must be accompanied as is in
other parts of the world. Africans should
be able to protect their findings to become
owners of their intelligence.
Private institutions like The AFRICAN
CHAMBER OF Trade &Commerce (ACC)
through her advocacy platforms, seeks to
channel Africa’s trade and industry through a
shared federated vision.
The target is to build adapted infrastructures
to guarantee Africa’s economic development
with an emphasis on IP asset ownership by
Africans.
The Role of IP for Africa’s Socio-economic
development is critical. While vehicles
like the ACC work with experts, inventors,
businesses, and stakeholders to secure
“sector-oriented inclusive business models
to grow African markets, the need to fund
research remains paramount.
Competitiveness in value chains can only
be experimented through entrepreneurial,
innovative start-up initiatives for Africa’s
economic growth. As asset owners, African
markets will be more attractive with the
potential and capacity to conquer new
markets. Thus, owners and consumers of
services and the tools they sell will result
in African businesses and infrastructures
witnessing substantial growth percentages.
There is, therefore, urgent need to redirect
our policies and resources towards funding
research and development in Africa.
With Africans owning solutions for African
problems, the socio-economic impact will be
friendly and attractive with an even playing
ground for Africans and their development
partners.
In all fairness, better welfare resides in
the ability to offer competitive goods
and services produced locally for local
consumption.
As signatories to several bilateral regional
and international binding trade tools (The
recently ratified Continental Free Trade
Agreement CFTA, AGOA, OMC, EPA, PCT,
Madrid Agreement and Protocol, Paris
Convention, ADPIC, The Bangui Laws, etc.)
Africa may not take full advantage of these
laws in the absence of IP asset ownership in
exchange.
If we consider that “ECONOMIC RIGHTS “are
fundamental Human rights, Africa’s industrial
development can no longer wait. This calls
for institutional advocacy with skilled experts
to address these concerns.
In conclusion
Knowledge ownership is something Africans
have shied away from, for centuries.
However, IP constitutes an integral part
of African assets in virtual capital worth.
Acquisitions should be considerably funded
for African economies to witness prosperity
from their cultural heritage, with Africans as
owners of their talents in quality and value.
Finally, the need to concert and
forge reliable strategies for
successful partnership initiatives
to fund IP asset ownership in
Africa is unequivocal. This should
influence the pace and standards
of business. The time is NOW not
TOMORROW!
16 17

NIGERIA CHINA
OAA Law
Name: Amaka Okafor
ONAMBELE-ANCHANG & ASSOCIATES LAW FIRM
Law firm name:
Stillwaters Law Firm
Country: Nigeria
18
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
Amaka Okafor has an LLM in
International Trade Law from the
University of Leeds United Kingdom
and is an experienced Intellectual
property lawyer located in Lagos
Nigeria. She started her practice in
2014 with Stillwaters law firm; one
of the leading intellectual property
firms in Nigeria and has risen to the
position of senior associate since
then. In 2014, Amaka also founded
Safari Renewals. Safari Renewals
is a leading Intellectual Property
maintenance and management
company also in Nigeria.
The company was primarily established
to provide high quality and affordable
Intellectual Property renewal and recordal
services in all African countries (including
OAPI and ARIPO). Safari’s vision is to become
the global market-leading company in
the maintenance and management of
IP in Africa by delivering state-of-the-art
services and laying down an international
standard for quality reliability and value in
the industry.
Amaka has successfully built a team that
is comprised of qualified and dedicated IP
practitioners as well as diverse staff from
various trademarks and patents Registries
throughout Africa, with extensive expertise
in dealing with Intellectual Property
transactions and management, sharing
a common goal of meeting their client’s
needs in the best way possible.
She has 5 years of working experience
in intellectual property protection and
enforcement in Africa and has a keen
interest in branding and trademark
protection in the digital age. During her
practice, she participated in a wide array of
IP matters. From searches to registrations,
renewals, annuities, assignments, agency,
distributorship, franchising, licensing,
transfer of technology, copyright
depository, piracy, infringement, passingoff,
border enforcement measures, customs
related assistance, product registration,
and dispute resolution matters. She has
filed over 1000 trademark applications and
successfully registered over 500 in various
African countries in the course of her
practice. In addition, she has handled over
100 oppositions and refusal hearings.
Amaka has also written several articles
on diverse issues including but not
limited to intellectual property, branding,
counterfeiting, and bilateral investment
treaties.
She is also the assistant secretary at the
IP Committee- Nigerian Bar Association-
Section on Business Law (NBA-SBL) and
played in a vital role in the inauguration
of the IP Committee in several tertiary
institutions in Nigeria.
Position: Associate
Website: www.stillwaterslaw.com
19

The importance of
NIGERIA CHINA
Intellectual Property
to Small and Medium-Sized Enterprises.
As discussed by Ms. Amaka Okafor Associate, Stillwaters Law Firm
www.stillwaterslaw.com
With the advancement of the internet, technology, social media and
entrepreneurship becoming mainstream there has been a significant
shift from school leavers seeking to work with traditional organisations
(e.g. banks, schools etc.) or pursuing traditional careers such as law,
medicine and accounting to setting up businesses/small and mediumsized
enterprises (SMEs) and acquiring skill sets centered around
information technology, innovation, media, digital marketing to mention
but a few; otherwise known as the 21st century skills.
20
Most SMEs, regardless of what product or services
they provide, continuously use, and create IP
daily. Every SME today, either has a trading name,
an invention, valuable confidential business
information, creative, original designs or may
have significantly improved on a product or
service. For example, László József Bíró was a
Hungarian-Argentine inventor who patented the
first commercially successful modern ballpoint
pen. However, after him, there have been several
improvements on this invention by other persons,
which have likewise been patented. In addition to
the pen being a patentable invention, the name
on the pen is another form of protectable IP called
trademarks.
In this current era of creativity, invention, and
innovation, there is no better time to stress the
importance of Intellectual Property in SMEs.
This article briefly addresses the meaning of
Intellectual Property, the rights conferrable on the
owner of an IP (i.e., Intellectual Property Rights
-IPRs) and their relevance to SMEs.
Intellectual Property
in a nutshell
Every business enterprise broadly has two
categories of assets;
• Physical Assets: such as machinery, buildings
and large warehouses
• Intangible Assets (Intellectual Property):
which includes the brand, trademarks, designs
inventions and other intangible possessions of
the business
Previously, the value of the physical assets of a
business to a large extent, determined the value
of the business and were the significant sources
of revenue for a business. However, recently,
businesses have begun substituting these bulky
physical assets with intangible assets, and as such,
IP is fast becoming more valuable than physical
assets in many SMEs. For instance, it can be
observed that more companies are now relying
more on innovative software and programs as a
major source of income. This trend can also be
observed in sectors that still require these physical
assets (such as the manufacturing sector) as a lot
of SMEs in these sectors rely more on creativity
rather than the size of their machinery to remain
relevant in highly competitive markets. Intangible
assets are indeed taking center stage in this new
dispensation and SMEs need to be sensitised on
its importance to adapt and benefit from this
development adequately.
Intellectual property rights
For SMEs to adequately benefit from their IP, one
vital step is protecting these intangible assets
by acquiring exclusive and enforceable legal
rights in them. These rights are referred to as
INTELLECTUAL PROPERTY RIGHTS (IPRs) and are
usually acquired by registering or depositing (in
cases of copyright) these intangible assets with the
relevant agencies.
IPRs are broadly classified into:
• Patents; protect innovative products
(inventions) and processes
• Copyright; protects literary works
• Industrial Design; protects a creative design
(including textile designs)
• Trademarks and Designs; protect distinctive
signs/ brand
The relevance of acquiring
IP rights
• The most important benefit of protecting IP
or acquiring IPRs is the exclusivity it grants the
Holder. Trademarks, for example, prevent third
parties from using and/or registering identical
and/or confusingly similar marks.
• IPRs afford the Holder the liberty to create
a brand and niche of itself, without being
susceptible to brand dilution by unhealthy
competitors.
• Due to the exclusivity IPRs confer, the Holder
enjoys a higher return on investments. For
example, the Holder could sell or franchise its
IPR, which may not have been possible if its IP
was not protected.
• For SMEs dealing with inventions and seeking
to attract investors, having a patent portfolio,
demonstrates a high level of expertise,
and could be very persuasive in attracting
investment.
• A well-structured and protected IP portfolio
can be used as collateral for obtaining loans.
• One of the major challenges faced by most
SMEs is marketing. A successful marketing
strategy shows a link between the product and
services rendered with the SME. Intellectual
Property is a vital factor in creating this link. It
essentially differentiates, promotes diversifies
and markets the products/services of the IPR
holder.
As crucial as IP may seem, it is still constantly
disregarded by most SMEs and its relevance
and potential for revenue generation grossly
underestimated.
To Conclude
Intellectual Property is, in many ways, one of
the most relevant parts of any business today.
Trademarks, for example, are essentially the face of
any business involved in the production of goods.
It enables consumers to distinguish the Holder’s
goods from those of its competitors. It serves
as a guarantee to consumers of the quality to
expect when purchasing an item. For example, the
brand ‘NEW LOOK’ is associated with affordability,
whereas “LOUIS VUITTON” signifies premium
quality. Any customer buying a pair of shoes from
either of these brands is guaranteed of what to
expect.
IP, if properly developed and managed increases
the competitiveness of any SME and could also
create secondary revenue in terms of licensing,
franchising or sale which may significantly raise its
profit margins. IP also enhances the SMEs value in
the eye of potential investors and could be used as
collateral to obtain loans.
However, like physical assets, IP must be legally
acquired, monitored, and managed carefully before
SMEs can reap its full benefits. Before this can be
achieved, entrepreneurs must first acknowledge
the importance and relevance of IP and begin to
appreciate it as an investment and valuable asset.
Once an IP has been legally protected and there
are demands for the product protected by the IP, its
value substantially skyrockets and, in most cases,
becomes the most valuable asset of the business.
21

CHINA
Name: Brenda Zhao
Asia
Law firm name:
Corner Stone & Partners
Country: China
Position: Senior Partner
Website: www.cornerstoneip.com.cn
Brenda Zhao is a senior partner of
Corner Stone & Partners with almost
20 years’ experience in the IP field.
Brenda is very proficient in Chinese
and foreign IP laws,
regulations and policies and has
sound knowledge and expertise on
trademark matters.
In the past, almost 20 years, Brenda
has been engaged in IP protection,
and also practicing the philosophy”
A Foundation to Your Success,”
addressing clients’ needs, and
providing clients with high quality,
efficient and thoughtful law services.
She is renowned for her exceptional
professional skills and down to earth,
meticulous work attitude.
As an excellent trademark attorney, Brenda
is committed to providing clients with
overarching IP protection and diversified
dispute resolution methods to find the best
cost-effective solutions. With her great legal
expertise and remarkable communication
skills, she has provided effective legal advice
to many clients; especially handling several
significant IP protection cases for many
world-famous companies. Her service has
achieved excellent results in the protection
of clients’ rights and interest and earns her
positive recognition.
With many years of experience, Brenda not
only provides the necessary support for
clients’ trademark affairs in China but also
does well in handling high-end complicated
cases and providing professional legal
advice. She is an expert in trademark
opposition and review, copyright and
domain name protection, IP infringement
and litigation, and other IP dispute
resolution.
Brenda has also written and published
many professional articles in relevant
national and international magazines. She
has lectured at national and international
IP forums and moderated IP round tables
in the fields of trademarks. Brenda is
passionate about sharing her experience in
the IP field and contributing to IP protection
and maintenance of a fair competition
environment.
She was awarded the Elite Women award
in 2018, in the campaign against IPR
Infringement and Counterfeit in China.
Currently, Brenda serves as the chair of
the Asia-Pacific Subcommittee of the ADR
and Mediation committee of INTA and as
a member of the Anti-Unfair Competition
Team of Marques.
Sponsored by
22
23

elevance degree, protection should extend to the goods in Class 11 in this Disputed case. mark: No. 10316891 Corner Trademark Stone “
"of Hong Kong Taitaile
It is a common & Partners
view in the IP field that cross-class protection should be provided for
3. The Court
3. The
Ruling
Court Ruling
Electrical Appliance Cross-Class Co., Ltd. ("HK Taitaile"), Protection a well-known used in relation trademark of Well-known to that the enjoys goods considerable in Class Marks popularity. However, in general,
3. The Court Ruling
CHINA
11: lamps, refrigerators, and air conditioning seasonings. apparatus, the The protection relevant electric is limited heating decisions to goods apparatus, or services faucets bearing considerable relevance to the
3. The Court Ruling
3. The Court Ruling
on
Should It is a common
administrative
Accord view in
penalty
with the IP
produced
Their field that cross-class
by
Popularity protection should be provided for
well-known mark. In the event of marginal relevance, protection will generally not
for pipes (Am.), bath heaters, etc.
The court held the following: The court held the following:
Nestle a well-known also indicate trademark that Nestle that enjoys had considerable put popularity. However, in general,
The court held the following:
be given despite trademark --- similarity by Brenda to balance public Zhao interests. of
The court held the following:
in a great the protection deal of is effort limited to protect goods or their services bearing considerable relevance to the
1. The disputed mark constitutes
太 太 乐 trademark on the goods of
Protection of well-known
The court held the following:
Corner Stone
Cited marks: the mark “ well-known & Partners
” in series mark. We take
with In the the view
numbers event that of since
of marginal well-known
8640043, relevance, marks have
150618, protection huge or will small generally popularity not or
reproduction and imitation of the
1. The disputed mark constitutes reproduction and imitation of the seasonings cited marks. prior to distinctiveness, the date of for application
those with huge popularity,
trademarks
protection according
should
to their
accord
1. The
1. The disputed
disputed cited mark marks. constitutes
constitutes Comprising reproduction
reproduction the and 843154 Chinese and of
and Societe imitation
imitation des Produits of be given the
for registration of Nestle despite
the
cited of cited the S.A. trademark marks. (“Nestle”), similarity
disputed marks.
used in to balance relation public to the interests.
popularity should be mark. provided, with the scope with of protection their most possibly popularity. extended or The
Comprising the Chinese characters “" 金 品 太 太 Z” 乐 ," the disputed
It is
mark
a common
exactly
view contains
the IP field that cross-class protection should be provided for
1. The disputed mark constitutes Comprising
Comprising reproduction the Chinese
the mark Chinese and characters
exactly
imitation characters contains
of " 金 the 品
" the 金 太
品 cited distinctive 太 乐
太 ," marks. the disputed mark exactly liberally contains interpreted, to effectively fight
(iv) Although the goods of lamps, scope the acts of of unfair protection competition like
乐 should
a ," ," well-known the disputed trademark mark exactly contains
We take that the 1 view enjoys that considerable since well-known popularity. marks However, have huge in general, or small popularity or
the distinctive characters " 太 太 乐 “ in the cited ” marks. Also, the combination refrigerators, of air the
"passing-off."
Comprising the Chinese characters the conditioning apparatus, be extended, and crossclass
protection be provided
the
distinctive " 金 distinctive 品 太 太 characters 乐 ," characters the disputed " 太 " 太 乐
太 mark "
乐
in " the exactly in the
cited cited contains
marks.
the marks. protection
Also,
Also, the
is
combination of the
distinctiveness, limited the combination to goods for services those of the
with bearing huge considerable popularity, relevance protection to the according to their
Also, the combination of the characters bath heaters, etc. in Class 11 in relation
characters “ 太 太 乐 ” and “ 金 品 ” the disputed mark does not bear any special
the distinctive characters " 太 太 characters 乐 characters " in the “ 太 cited “ 太 “ 乐
太 marks. ”
乐 and
” and Also, “ 金 品
“ 金 the ”
品 in combination ” the the
disputed disputed of mark well-known
the does mark.
to which not popularity In bear the event
the any should 1. of Facts
disputed special marginal be provided, of the Case relevance,
mark is with used the protection scope do of protection will generally most not possibly extended or
mark does not bear any special
if need be to maintain the
meaning which is different mark from does that not of bear the any characters special meaning “ 太 太 be 乐 given ” in despite the not constitute cited trademark
meaning which different from that of the characters “ 太 乐 ”
liberally
in the
marks.
cited
interpreted, similarity goods to
marks.
to balance effectively to the public goods interests. fight the acts of unfair competition like
characters “ 太 太 乐 ” and “ 金 品 ” meaning the disputed which which is is mark different does
is different from not
from that bear
that of any the special
of characters the “ of 太 太 seasonings 乐 ” in the in Disputed cited Class marks. 30 mark: in No. respect 10316891 of Trademark distinctiveness “
"of Hong Kong Taitaile of wellknown
used in relation trademarks to the goods in Class as much
"passing-off."
Therefore, the disputed mark constitutes reproduction and imitation of the cited
meaning which is different from Therefore,
Therefore, that of the characters the
disputed disputed mark “ 太 mark 太 constitutes 乐 ” constitutes in the cited reproduction
reproduction marks. and which imitation the cited of the Electrical marks cited Appliance are used, Co., Ltd. the ("HK Taitaile"),
We take the and view imitation that since well-known of the cited
marks have huge or small popularity or
marks.
Therefore, the disputed mark constitutes goods for both sides 11: lamps, are refrigerators, all articles air conditioning of apparatus,
marks.
as possible
electric heating apparatus,
and
faucets
avoid their
Cross-Class Protection Therefore, of the disputed mark constitutes marks.
reproduction reproduction and and imitation of of the the cited cited distinctiveness, for
daily 1. use Facts those
whose of the with
for Case huge popularity, protection according to their
audience pipes (Am.), bath are heaters, ordinary etc.
Well-known Marks
dilution, thereby effectively
marks.
popularity should consumers. be provided, As Nestle’s with the scope chicken of protection extract most possibly extended or
marks.
and seasonings bearing the mark “ 太 太 乐 ” fighting the actions of unfair
liberally interpreted, to effectively fight the acts of unfair competition like
2. Prior to
2.
the
Prior
date
to
of
the
application
date 2. Prior of application to for the registration date for of registration application of the disputed
of for the disputed
mark, Nestle’s cited
have mark, Disputed
been on Nestle’s mark: Cited No. marks:
sale for cited 10316891 the mark Trademark “ ” in “ series with the numbers "of Hong of 8640043, Kong 150618, Taitaile
2. Prior to the date of application for registration a long time and competition like committing
"passing-off." of the disputed mark, Nestle’s and 843154
cited
of Societe des Produits Nestle S.A. (“Nestle”), used in relation to the
marks had taken a significant registration market of the share disputed in terms mark, of Nestle’s the goods of they chicken Electrical have extract been Appliance publicised Co., Ltd. and ("HK sold Taitaile"), all used
marks had taken dishonesty in relation to the goods and in Class “passingoff.”
electric heating apparatus, faucets
2. Prior to the date of application marks for registration had taken cited
a significant of marks a the significant disputed had taken
market
market mark, a significant
share Nestle’s share in
market
terms
in cited
of the goods of chicken extract
Should Accord with Their Popularity
terms of the over goods the country, of chicken the extract consumer 11: lamps, refrigerators, air conditioning public, apparatus, 1
(seasoning) and seasonings share and achieved terms of the considerable goods of chicken popularity on
(seasoning) and seasonings and achieved considerable 1. Facts popularity of when the the Case market, catching on the
so
ction of Well-known Marks
marks had taken a significant market sight market, of the so disputed mark
(seasoning) share in and
extract terms seasonings of the goods
(seasoning)
and and
achieved of chicken
seasonings
considerable extract
and
popularity for pipes on (Am.), the bath market, heaters, so
etc.
much so that they are no less than well-known trademarks. Therefore, on the the cited goods marks of lamps, refrigerators, etc.,
Cross-Class Protection of Well-known Marks
much
much so that
so that
they achieved they are no
are considerable less
no less
than than well-known popularity well-known trademarks. on the trademarks. Therefore,
will Therefore, inevitably
the cited
the associate cited marks
d with Their Popularity by Brenda Zhao, Senior Partner of Corner Stone & Partners
(seasoning) and seasonings and achieved considerable popularity on the market, so
marks
it with Nestle’s
should be provided with market, extended so much protection so that they according are no less
should be provided with extended protection according
to Disputed their mark:
to
popularity, well-known No. 10316891
their popularity,
with trademark Trademark
with
太 太 “ 乐 to a "of Hong Kong Taitaile
Should Accord with www.cornerstoneip.com.cn
Their Popularity
much so that they are no less than should well-known be provided than trademarks. well-known with Therefore, extended trademarks. the protection cited Therefore, marks according considerable to Cited their marks: popularity, extent, the mark “
with with the ” in series with the numbers of 8640043, 150618,
--- by Brenda Zhao of
Electrical Appliance Co., Ltd. ("HK Taitaile"), used result in that relation to the goods in Class
--- by Brenda Zhao of
protection
protection
scope extended
scope the extended
from cited Class
from marks 30
Class
to should Class
30
11.
to be Class provided
protection scope extended from Class 30 to Class 11.
and 843154 of Societe des Produits Nestle S.A. (“Nestle”), used in relation to the
should be provided with extended protection according to their popularity, with 11.
the close connection between the cited
s
11: lamps, refrigerators, air conditioning apparatus, electric heating apparatus, faucets
It is a common view in the IP field that cross-class protection
with extended protection according to
There are four reasons as below:
marks and Nestle’s goods of chicken
Corner Stone & Partners
protection scope extended from There Class There Cross-Class are 30 four
are to Class four reasons their reasons 11. popularity, Protection as below:
as below:
with of protection Well-known scope for pipes Marks (Am.), bath heaters, etc.
should be provided for a well-known trademark that enjoys
extract and seasonings is damaged and 1
(i) Nestle’s
(i) Nestle’s
chicken extract
chicken
extended products
extract
from
products
Class under 30 the to
under
Class TOTOLE 11.
the TOTOLE
brand have the brand distinctiveness received
have received
the
There are four reasons as below:
of Nestle’s the well-known
that cross-class protection should be provided for considerable popularity. However, in general, the protection
(i) Nestle’s Should chicken Accord extract with products Their under Popularity the TOTOLE brand have received the
It is a common view in the IP field that cross-class protection should be provided for
trademark “ 太 太 乐 ” is tarnished.
ys considerable popularity. However, in general, is limited to goods or services bearing considerable titles of China
titles of
Name
China There Brand
Name are Product
Brand four and reasons Product
Shanghai
and as below: Shanghai
Name Brand
Name
from
Brand
governmental
(i) Nestle’s
relevance
Cited marks: the mark
chicken extract products titles of under China the Name TOTOLE Brand brand Product have --- and received by Shanghai Brenda the Name Zhao Brand of from “
from governmental ” in series with the numbers of 8640043, 150618,
a well-known trademark that enjoys considerable popularity. However, in general,
governmental
r services bearing considerable relevance to the to the well-known mark. In the event of marginal relevance, agencies,
agencies,
trade associations,
trade (i) associations, Nestle’s or civil chicken or
societies. extract civil societies. products The affiliated
and
under The affiliated
enterprise,
843154 of Societe
enterprise,
TOTOLE
des Produits Nestle S.A. (“Nestle”), used in relation to the
the protection is limited to goods or services bearing considerable relevance to the
titles of China Name Brand Product agencies, and Shanghai trade associations, Name Brand or from civil governmental
societies. The affiliated enterprise, TOTOLE
Corner Stone & Partners
TOTOLE
marginal relevance, protection will generally not protection will generally not be given despite trademark
the TOTOLE brand have received the
well-known mark. In the event of marginal relevance, protection will generally not
company,
company,
has received
has received
the titles of China Top 100 Food Industry Enterprises and
agencies, trade associations, or civil company, societies. has titles received The of China the affiliated the
titles Name titles of enterprise, Brand China
of China Product Top TOTOLE Top 100 and 100 Food
Food Industry
Industry Enterprises
Enterprises and 1
ty to balance public interests.
similarity to balance public interests.
and
be given despite trademark similarity to balance public interests.
China Top 10 Seasoning Shanghai Manufacturers. Name Brand Relevant from governmental
China It is a common Top 10 view Seasoning the IP field Manufacturers. that cross-class Relevant protection audit reports should audit
and be reports provided other documents
company, has received the titles China of China Top Top 10 In conclusion.
and for other documents
agencies, Seasoning 100 Food
trade Manufacturers. Industry Enterprises
associations, Relevant and
or civil audit reports and other documents
We take the view that since well-known The Trademark Review and Adjudication cited marks is liable to mislead the public may prove a
may
that well-known
prove
Nestle’s trademark
that societies. sales
Nestle’s
volume that enjoys
The sales affiliated is considerable
volume
large enterprise, and large
the popularity. chicken However,
and TOTOLE the
extract in general,
chicken The
and
extract registration
seasonings
known marks
marks
have huge or small popularity or
China Top 10 Seasoning Manufacturers. and seasonings of the disputed mark
We take have the view huge that or since small well-known popularity marks have Board huge or (“TRAB”) small popularity held or that although the and harm Nestle’s interests, contravening may prove Relevant that Nestle’s audit reports sales volume and other is is large documents
the protection is limited and the chicken extract and seasonings
under the TOTOLE brand company,
to goods
are enjoying has
or
received
services
considerable the
bearing
titles
considerable
of popularity China
relevance to the
infringes the trade Nestle’s and right to its well-known
uge popularity, or distinctiveness, distinctiveness, protection
for
according
those for those with
to their
huge with popularity, huge protection marks of two according parties to are their similar, the goods of Article 13.3 of PRC Trademark Law,
may prove that Nestle’s sales under volume well-known under the is the large TOTOLE mark. TOTOLE Top and In the 100 the brand
event Food chicken brand of
are
marginal Industry are extract enjoying relevance, enjoying Enterprises and considerable seasonings
protection considerable and will
popularity
generally
in the trade and
trademark, popularity not and in the trade application and
for its
the scope
popularity,
of protection most
protection
possibly extended
according
or
to their seasonings in Class 30 in relation to which the which provides that “Where a mark is a
popularity should be provided, with the scope of protection most possibly extended or
among the
among
relevant
the
public
relevant China nationwide.
public Top 10 nationwide. Seasoning Manufacturers.
popularity should be provided, with the cited marks are used differ markedly from the reproduction, imitation,
registration contravenes Article 13.3 of PRC
under the or TOTOLE translation of brand a are
be
enjoying
given despite
among the considerable
trademark similarity
relevant Relevant
public popularity
to balance
audit
nationwide.
in
public
the
interests.
trade and
ly fight the acts of unfair competition like
reports and other
scope liberally of protection interpreted, most to effectively possibly extended fight the acts goods of unfair of lamps competition and refrigerators like in relation third party’s well-known trademark which
Trademark Law.
among the relevant public nationwide. documents may prove that Nestle’s sales
or "passing-off."
liberally interpreted, to effectively fight the to which the disputed mark is used, and no has been registered in China and where the
We take the view volume that since is well-known large and the marks chicken have huge extract or small popularity or
acts of unfair competition like “passing-off.” confusion is liable to be created among the goods are non-identical or dissimilar, which
distinctiveness, for and those seasonings with huge under popularity, the TOTOLE protection brand according to their
relevant public, thus deciding the disputed may mislead the public and cause injury
of the Case
1. Facts of the Case
are enjoying considerable popularity in
4. Significance
mark be maintained.
to the interests of the registrant of the wellknown
trademark, no registration shall be liberally interpreted, to effectively fight the acts of unfair competition Opinions like of the Supreme People’s Court
popularity should be provided, with the scope of protection most possibly extended or
the trade and among the relevant public
Disputed mark: No. 10316891 Trademark
Dissatisfied with the TRAB’s decision, Nestle
nationwide.
granted and the use of the mark shall be
about Some Issues Concerning Intellectual
ademark “ Disputed mark: “of "of Hong No. 10316891 Kong Taitaile Trademark Electrical “
"of Hong Kong Taitaile
"passing-off."
instituted proceedings against TRAB before prohibited”.
Property Trial Service in Current Economic
Appliance Co., Ltd. (“HK Taitaile”), used in
(ii) Nestle’s chicken extract and seasonings
Taitaile"), used Electrical in relation Appliance to the Co., goods Ltd. in ("HK Class Taitaile"), used in Beijing relation to Intellectual the goods in Class Property Court. The
Situation specifies the following: “In deciding
relation to the goods in Class 11: lamps,
under the TOTOLE brand have been
1. Facts of the Case
goods similarity and trademark similarity,
ning apparatus,
11:
electric
lamps, refrigerators,
heating apparatus,
air conditioning
faucets
apparatus, electric court heating made apparatus, the No. faucets (2016) BJ73AF4969 2. Protection of well-known trademarks
refrigerators, air conditioning apparatus,
widely publicised and heavily promoted
Administrative Ruling on February 25, should not only serve to avoid confusion
the distinctiveness and popularity of the
electric for pipes heating (Am.), bath apparatus, heaters, etc. faucets for pipes
via the media like CCTV, provincial TVs,
2019, in favor of Nestle and the disputed over origin but extend to avoidance
registered trademark to be protected
(Am.), bath heaters, etc.
and newspapers.
mark, was invalidated.
of dilution. It would be insufficient to Disputed mark: No. 10316891 Trademark “
"of Hong Kong should Taitaile be taken into account. The more
determine the scope of protection of
Cited Electrical Appliance (iii) Co., In Ltd. their ("HK Taitaile"), relevant used decisions, in relation the to the goods distinctive in Class and the more popular a
Cited marks: the mark “
” in series with
the numbers of 8640043, 150618,
in series with the numbers of 8640043, 150618, 2. Cause of Action
prior well-known trademarks on the
the numbers of 8640043, 150618, and 843154
Trademark Office under the State registered trademark is, the more extended
and 843154 of Societe des Produits Nestle S.A. (“Nestle”), used in relation to the
11: lamps, refrigerators, air conditioning apparatus, electric heating apparatus, faucets
ts Nestle S.A. of Societe (“Nestle”), des used Produits in relation Nestle to S.A. the
grounds of “confusion over the origin of
(“Nestle”), Nestle asserted the following:
Administration for Industry and and stronger protection will be provided for
goods” only. In view of the cited marks’ for pipes (Am.), bath heaters, etc.
used in relation to the goods in Class 30:
Commerce and Beijing No. 1 Intermediate it. This helps to stimulate the winners on the
1
chicken extract (seasoning), seasonings, etc. 1. Nestle’s cited marks constituted wellknown
trademarks. The disputed mark is degree, protection should extend to the
great popularity and the goods’ relevance
People’s Court have recognised Nestle’s market, improve the market environment,
1
mark as a well-known trademark and stop improper acts of free-riding and
Nestle applied to invalidate HK Taitaile’s mark.
Cited marks: the mark “ ” in series with the numbers of 8640043, 150618,
a reproduction and imitation of Nestle’s goods in Class 11 in this case.
in terms of the goods of chicken extract imitation.”
well-known marks. Its coexistence with the
and 843154 of Societe des Produits Nestle S.A. (“Nestle”), used in relation to the
24 1
25

SRI LANKA
Women in
Intellectual Property Law
In the early days…
In the early days, the terms copyright, patent,
and intellectual property were terms that were
only limited to masculine space. Creative and
literary works were assumed to be authored by
men. Women were only seen as an inspiration for
the cultural creation of men. Women who seek
to create either scientific or artistic work were
required to do so on masculine terms. They were
seen as inferior to men simply because of their
gender because what is protected by intellectual
property law is the outgrowth of a gendered
system, intellectual property law itself became
premised upon assumptions of creative work
favouring the male creator.
For example, knitting, quilting, and other
needlework arts are creative industries which
are dominated by women. They were industries
where women primarily illustrated their creativity.
However, unlike men, women are more pursued
by caring and sharing their knowledge rather
than being profit-oriented. By contrast, the
central purpose of intellectual property law is the
incentive logic. That is to promote the production
of new works or new ideas by guaranteeing the
maker the exclusive right to remuneration for the
things that he or she produces. Therefore, knitting
and quilting developed as collective enterprises
outside copyright law. However, nowadays, these
industries have been commodified, and with
the ease of copying, it has become essential for
women to seek copyright protection for their
patterns.
“Literature” was established as a male domain.
However, as literacy among women grew,
women took up the pen to write. Copyright law
is structured to identify an individual author and
provide certain rights to that author. It mainly
helps them to monopolise revenues from the
As discussed by Anomi I Wanigasekera, Julius & Creasy
www.juliusandcreasy.com
Intellectual property law is a neutral area of law. Comparatively, areas of
law such as family law and employment law are gender-sensitive from its
formulation. For example, ‘family law’ is built on gender-based themes such as
separation, family violence, parenting disputes, etc. Laws have been molded
to address women’s disadvantage. In the case of intellectual property law,
values about gender, race, and class seep in only at the execution and not at
the formulation. On the other hand, intellectual property law is a fast-growing
practice area of law where the subject matter varies from very technical issues
to products of everyday life. Female attorneys who pursue careers in the field of
intellectual property law face many challenges across the globe.
books. Early feminists were more interested
in seeing their ideas spread than they were in
protecting their copyrights. However, in present
many female authors earn their living from the
system of copyright.
The history of invention seldom mentions
women’s inventive achievements. Industrial
women are almost non-existent. The general
perception was that invention was an
overwhelmingly masculine affair. During the
early days, even when women invented objects
(because women lacked property rights and due
to financial constraints), a patent was often taken
in the name of the father, brother, or husband.
Nowadays, women have become professional
inventors. For example, fields like biotechnology
have a large number of female researchers;
however, unlike men, women are less likely to
commercialise their inventions. In my personal
opinion, women by nature are soft negotiators.
They are indirect and person-oriented. Therefore,
they are less likely to market themselves and their
work to potential business partners.
To present times in IP Law…
The number of women who graduate from law
school has increased with time. However, only
a few prefer to practice as lawyers. Moreover,
among them, only a very few female attorneys
specialise in intellectual property law. Even
among them, fewer female attorneys specialise in
patent law practice compared to trademark law.
In the patent field, the existence of lesser women
can be explained by the fact that it is a highly
technical field.
Scientific and technical training is necessary
to specialise in this field, and fewer women
earn technical degrees. In many parts of the
world, women have limited access to the kind
of education that would allow them to pursue
careers in the technical field. However, trademark
law and copyright law are popular areas of law
among women where they outnumber men.
One of the reasons why many female attorneys
choose trademark law can be attributed to the
role they play when interacting with clients. It is
client-oriented. Often the attorney must guide
and counsel her client on the selection and best
use of the mark.
The Gender system has influenced who invents
and who creates creative work. The general
perception that men are the important inventors
remains. Educational, social, cultural, and
economic factors have dissuaded women from
pursuing inventive careers. Women are still
absent from many aspects of the intellectual
property law system, not only as inventors and
creators but also as patent attorneys.
Sri Lanka…
Compared to other countries in the world, the
position of Sri Lankan women is much better.
Sri Lanka was the first country in the world
to elect a female head of state. Also, a recent
article revealed that 64% of the professionals
in Sri Lanka are women. Companies in Sri Lanka
prefer female workers as their attitude towards
work is more positive, and they are ready to take
any role. All attorneys in Sri Lanka are eligible to
practice as trademark agents, and the majority
of the registered trademark attorneys are female
lawyers. Even the Director General, as well as the
Deputy Directors of National Intellectual Property
Office, are females at present.
Therefore, despite the position in other
countries, it appears that Sri Lankan
women have achieved equality with men
even in the arena of intellectual property
law, except in the field of technology.
26
27

INDIA
Name: Manisha Singh
Law firm name:
LexOrbis
Country: India
Position: Co-Founder & Partner
Website: www.lexorbis.com
Manisha Singh is Co-Founder and Partner
at LexOrbis, India’s premier Intellectual
Property Firm, providing end-to-end
IP services and solutions starting from
ideation to monetisation including,
procurement, protection, maintenance and
enforcement of all forms of IP rights and
assets and other legal services.
She has been advising and handling
dispute resolutions for a wide range
of clients including global technology,
pharmaceutical companies, public sector
enterprises, Government of India and
Department of Non-Banking Companies, to
name a few. She regularly represents clients
as their litigating counsel at the Supreme
Court of India and various High Courts and
has over 20 years of litigation experience
practicing at all forums including at the
Supreme Court of India, High Court, District
Courts and other Tribunals.
Manisha studied law from one of India’s
premier law schools, The Law Faculty of
Delhi University, after completing her
Master’s degree in Economics from Patna
University.
Manisha is ranked amongst the top and
leading lawyers in IP and dispute resolution
segments of Indian legal practice by leading
law journals and publications. She is known
as one of the prominent thought leaders
in these segments and liked for providing
proactive, out of the box, business-oriented
counseling, and representation.
She founded LexOrbis in 1997 with a set of
like-minded lawyers to bring an international
perspective to the Indian intellectual
property right laws, that were in the process
of being integrated with the International
IP systems post-signing by India of TRIPS
Agreement in 1995. She worked closely
with the policymakers, judiciary, and other
stakeholders to establish a robust and level
playing IP regime in India, and she continues
to work on critical and high-stake policyrelated
cases.
Her in-depth understanding and knowledge
of all the aspects of IPR is reflected in her
prolific academic and research-based writing
in renowned publications worldwide and
she has been routinely invited to author
articles and commentaries on contemporary
IP policies and issues by national and
international publications including
Managing IP, World Intellectual Property
Review, Indian Business Law Journal, IP
Frontline, Marques, Mondaq, Asialaw, etc.
Manisha is member of many significant IP
forums and professional bodies in India
and abroad, including the International
Trademark Association (INTA), International
Association for the Protection of Intellectual
Property (AIPPI), American Intellectual
Property Law Association (AIPLA),
Intellectual Property Owners Association
(IPO), Licensing Executives Society
International (LESI), Asian Patent Attorneys
Association (APAA), European Communities
Trade Mark Association (ECTA) and
Pharmaceuticals Trade Marks Group (PTMG).
Manisha has been widely recognised for her
work in the IP space by various national/
international associations.
Some of her latest accolades include her
recognition for Patent prosecution work
by the IAM Patent 1000, 2019; IP Strategist
by IAM 300, 2019; Managing Intellectual
Property, 2019, recognising as an IP Star;
IP Star Women of the Year, 2019 by Legal
Media Group; 2019 GIPC- Award for
Excellence for invaluable services in the field
of IP; Recognised amongst India’s Top 100
Lawyers, The A-List by India Business Law
Journal; Recognised as Leading Lawyer for
IP by Asialaw 2018; Managing Intellectual
Property, 2018, recognising as an IP Star for
Litigation and Strategy & Counselling.
28
29

GREECE CHINA
Name: Eva Yazitzoglu
Law firm name:
Dr. Helen G. Papaconstantinou and Partners
Europe
Country: Greece
Position: Senior Partner
Website: www.hplawform.com
Eva Yazitzoglou is a co-founder of
HP&P (Dr. Helen G. Papaconstantinou
and Partners). After many years’ of
having a successful career in a leading
position with the firm, Eva became a
managing partner in 2018. Holding
a law degree from the University of
Athens, she is an Attorney at Law and
a European Patent Attorney.
Eva has more than 40 years of recognised
professional experience in trademark, patent
and copyright law, including consultation,
management, and maintenance of
international trademark and patent
portfolios and has been advising major
international clients in all industry sectors.
She has also worked closely with clients
from various sectors and has successfully
addressed various trademark and patent
infringement cases involving individuals
and companies throughout Greece, either
by reaching out-of-court agreements or by
proceeding to litigation.
She is a member of the Athens Bar
Association as of 1974 and is admitted to
practice before the Supreme Court and the
Council of State. She is a Council Member of
EPI and an active member of several other
professional bodies (including the Athens
Bar since 1974), AIPPI and INTA. Moreover,
she makes significant contributions through
various associations and prestigious IP
resources.
Name: Miranda Theodoridou
Law firm name:
Dr. Helen G. Papaconstantinou and Partners
Country: Greece
Position: Partner
Website: www.hplawform.com
Sponsored by
Miranda Theodoridou, partner and
co-founder of HP&P (Dr. Helen G.
Papaconstantinou and Partners),
heads the Trademarks and the
Administrative Courts Department.
Holding a law degree from the
University of Athens and an MBA
from the University of Derby, Miranda
is an Attorney at law and a member
of the Athens Bar since 1980, and a
European Patent Attorney with over
35 years recognised experience in all
IP issues.
She specialises in the legal representation of
major multinational companies before the
higher instances of the Administrative Courts
and IP litigation while providing consultation
in all trademark, copyright, domain name,
and GDPR matters. She is admitted to
practice before the Supreme Court and the
Council of State. She is a council member of
ECTA and a member of EPI, AIPPI, and INTA.
Miranda makes significant contributions
through various associations and prestigious
IP resources. Recent contributions include:
Templates of Commercial Law – Templates
concerning Oppositions and Recourses
before the Administrative Trademark
Committee – Nomiki Bibliothiki - July 2019,
GREEK LAW DIGEST - The Official Guide to
Greek Law - Trademark - Nomiki Bibliothiki -
February 2019, WTR Yearbook 2019/2020: A
global guide for practitioners - a supplement
to World Trademark Review - January 2019.
30 31
31

GREECE
GREECE
Maria Athanassiadou, partner and
co-founder of, HP&P (Dr. Helen G.
Papaconstantinou and Partners),
heads the patents and industrial
designs department. Maria holds
a law degree from the University
of Athens and a Masters’ degree in
Spanish studies from the University
of Barcelona. She is an attorney at law
and a member of the Athens Bar since
1996.
With more than 20 years’ experience in all
intellectual property fields, she focuses her
practice on IP litigation, prosecution, and
counselling, with a particular emphasis
on patents, utility models, supplementary
protection certificates, industrial designs,
Name: Maria Athanassiadou
Fotini Kardiopoulis, partner and
co-founder of HP&P (Dr. Helen G.
Papaconstantinou and Partners), heads
the anti-counterfeiting and antipiracy
department. She holds a law degree from
the University of Athens with first-class
honours and an LL.M. from the London
School of Economics and Political Science.
Fotini is a member of the Athens Bar since
1985 and has been admitted to practice
before the Supreme Court and the Council
of State. She has also been a lecturer for
10 years in the Police Academy.
Since 1998 Fotini has been dealing with a
broad range of IP matters with an emphasis
on trademarks, plant breeder’s rights, contract
drafting and reviewing and alternative dispute
resolution. She has extensive experience in
IP litigation, devising and implementing anticounterfeiting
programs, filing and administering
customs actions, monitoring and enforcing IP
rights online and advising on domain name
disputes, consulting on license & franchise
agreements and copyright issues. She has further
Law firm name:
Dr. Helen G. Papaconstantinou and Partners
Country: Greece
Position: Partner
Website: www.hplawform.com
Name: Fotini Kardiopoulis
and trademarks, advising major international
clients especially in the pharmaceutical
sector. She is admitted to practice before
the Supreme Court and the Council of State,
and she is an active member of the INTA and
PTMG.
She is a regular contributor to several
significant trademarks, designs and patent
publications. Recent contributions include:
3rd Edition Intellectual Property Country
Comparative Guide – The legal 500 - June
2019, WIPR Annual 2019 – GREECE – Business
Brief, Patents in Europe: Helping business
compete in the global economy 2019/2020,
Patents in Greece – Lexology GTDT - May
2019, General Court rules on genuine use of
figurative trademarks MEBLO – WTR Daily -
March 2019, Designs 2019 A Global Guide.
Law firm name:
Dr. Helen G. Papaconstantinou and Partners
Country: Greece
Position: Partner
Website: www.hplawform.com
conducted a significant number of seizures/raids,
including preparatory investigations concerning
various sectors, such as apparel, electric/electronic
goods, toys, watchmaking, and tobacco/cigarettes,
often involving, in addition to customs procedures,
civil and criminal action.
She is an active member of various associations,
including CIOPORA, MARQUES, and INTA. In
this context, she has given two presentations
as an invited speaker at the CIOPORA Academy
Workshop, which took place in Madrid on October
2008. She is one of the very few attorneys
specialising in plant varieties in Greece and the only
Greek lawyer being a member of CIOPORA.
Fotini regularly publishes articles in the fields of
her expertise. Recent contributions include the
GREEK LAW DIGEST - The Official Guide to Greek
Law - Trademark - Nomiki Bibliothiki - February
2019, WTR Yearbook 2019/2020: A global guide for
practitioners - a supplement to World Trademark
Review - January 2019, 3rd Edition Intellectual
Property Country Comparative Guide – The Legal
500 - June 2019 and WIPR Annual 2019 – GREECE –
Business Brief.
HP&P:
Women as lawyers
and leaders in IP in Greece
This is not the case with Dr. Helen G.
Papaconstantinou and Partners (HP&P). The
legal profession in Greece, particularly in
the upper echelons, was traditionally and
continues to be mostly male-dominated.
However as early back as in 1986, Dr. Helen
G. Papaconstantinou was one of the few
bright examples of women heading a
law office; leaving her individual mark in
the profession for more than 40 years, up
until her retirement at the end of 2018.
The tradition of the law office of Dr. P. D.
Theodorides – Dr. H. G. Papaconstantinou
(est. 1920) and the company Dr. Helen
G. Papaconstantinou, John Filias and
Associates now lives on through our law firm,
Dr. Helen G. Papaconstantinou and Partners,
which was established in 2015, with the
steering wheel of the Firm again entrusted to
women; namely to the capable hands of Eva
Yazitzoglou, Managing Partner and the other
three Partners Miranda Theodoridou, Maria
Athanassiadou and Fotini Kardiopoulis, who
have an in-depth experience in the IP field for
many years. Also, HP&P not only has women
in top positions, but it is also three-quarters
female.
The Firm is broadly recognised as leading in
the IP law sector in the country. HP & P enjoys
an international reputation for high-quality
expert services by providing sophisticated
legal and business solutions in the IP field and
aptly combines its international orientation
with a thorough knowledge of the Greek
legal and business environment.
What sets HP&P apart is its extensive
experience and expertise in the
As discussed by HP&P Lawyers
www.hplawfirm.com
Greece has established a strong legal and policy framework for ensuring
equal rights to both men and women in the country. However, evidence
shows that, in practice, discrimination seems to persist; Greece
currently has one of the lowest rates of women’ employment in the
European Union while the Greek financial crisis and austerity measures
have disproportionately affected women. Moreover, women are still
significantly under-represented in executive positions and top rank
positions in the legal profession.
entire spectrum of IP services and its
commitment to problem-solving and
achieving results. HP&P was the first law
firm of its kind to implement a quality
control system (ISO 9001/2015).
With respect to the people comprising the
Firm, HP&P is home to 11 fully qualified
lawyers with considerable experience in all
intellectual property matters over many years
of practice. Two HP&P attorneys are European
Patent Attorneys, while all the attorneys
of the Firm are members of the Athens Bar
Association. Most of them are admitted to
practice before the Supreme Court and the
Council of State. With the efficient assistance
of 22 experienced paralegals and supporting
staff, HP&P provides legal and administrative
services of excellent quality and closely
collaborates with 35 technical counsellors
whose expertise covers all technical fields.
The Firm serves its foreign clients in English,
French, German, Spanish, and Italian.
HP&P is registered in the Athens Bar
Association and is a member of the Greek
Association of Law Firms.
Moreover, the Firm has always been active in
promoting intellectual property matters in
Greece and internationally. All HP&P attorneys
are active members of various international
associations, such as EPI, ECTA, AIPPI, INTA,
PTMG, MARQUES, CIOPORA, ITMA, CIPA and
the UK Society of Legal Scholars.
The Firm’s expertise spans all aspects of IP
and related legal services (i.e., consultancy,
litigation work, and administrative support),
including, but not limited to trademark,
patent and design matters; copyright;
domain name and internet law; exploitation
of IP rights; anti-Piracy, anti-counterfeiting
and customs monitoring/border measures;
competition, advertising and consumer
protection law, and many more.
HP&P attorneys make significant
contributions to distinguished IP resources
as well as through various associations,
including the International Trademark
Association (INTA) and the European
Community Trade Mark Association (ECTA).
HP&P is consistently ranked among the top
IP law firms in Greece by international legal
directories and associations, indicatively
mentioning: Corporate INTL, Corporate
USA Today, IAM Patent 1000, IP STARS –
Trademarks and Patents, Legal 500, The
Trademark Lawyer, The Patent Lawyer, WIPR
Leaders, WTR 1000, and others and have
received many awards in the IP field.
Despite its top ranking, HP&P is
continuously striving to improve
the quality and reliability of its
services further and enhance its
actively inclusive working ethos that
encourages collaboration as the
main driving force behind effective
leadership and successful results. Our
vision is to keep on incorporating new
practice areas and opportunities so
that we can continue to adapt to the
growing and ever-changing needs of
our clients and the legal industry.
32 33

POLAND
Name: Izabella Dudek-Urbanowicz
Law firm name:
Patpol - European and Polish Patent
and Trademark Attorneys
Country: Poland
Position: Managing Director
Website: www.patpol.pl
North & Central America
Izabella Dudek-Urbanowicz is a
Polish and European Patent and
Trademark Attorney. She is a
respected practitioner in the field of
trademark law with a proven track
record of trademark prosecution and
contentious cases. She is a member of
INTA, Marques, PTMG, and ECTA.
Mrs. Izabella Dudek-Urbanowicz was elected
Managing Director of Patpol in 2016. She
leads the team of over 90 people, and her
key responsibilities include the development
of business strategies focusing on people
and innovation. Before her nomination,
Mrs. Dudek-Urbanowicz was the head of
the Trademark and Design Department and
proved herself to be an experienced patent
attorney and a capable team leader with
excellent managerial skills.
Mrs. Dudek-Urbanowicz has a legal
background as a Master of Laws from the
Faculty of Law and Administration at Warsaw
University.
Amongst the clients of Mrs. Dudek-
Urbanowicz, there are mainly
pharmaceutical and FMCG companies;
however, she also has vast experience
working with other industry sectors, as
far as trademark and design protection is
concerned. For Izabella, the best recognition
for her work are well-managed won clients’
cases and satisfied clients.
At work, what she appreciates most is daily
contact with people, both clients, and
colleagues. During her tenure, Patpol has
grown through a constant development
process, through new milestones in the
company lifecycle; such as establishing
Patpol Legal – a full-service law firm – in
late 2018 or introducing new employee
benefits packages, i.e., additional days off or
healthcare and sports packages.
In her own words: “Patpol is one of the
unique firms where the rotation is very low.
This company has its own energy, which
consequently attracts people who are not only
great specialists, passionate about their work
but also personalities with good spirit and
broad intellectual horizons and curiosity for the
world.”
Recently in 2019, Mrs. Dudek-Urbanowicz
was recognised as the recommended
professional in Poland according to
the World Intellectual Property Review
Leaders (WIPR Leaders) guide. The list of
professionals, WIPR Leaders, was selected
after a four-month nomination process,
during which opinions from 12,000 IP
specialists in the world were collected.
Outside work Mrs. Izabella likes spending
time with her daughters, reading fantasy
or detective books. Also, she is a big fan of
hiking excursions and collecting Japanese
dolls.
About the IP market
in Poland:
“I am pleased to note the positive trend
among Polish small, medium, and large
entrepreneurs regarding the demand for
protection of their industrial property
rights - not only trademarks but also their
inventions. There is a growing awareness
amongst businesses, research centres,
or NGOs about various possibilities of
financing innovations. Entrepreneurs
use these funds to make their inventions
– quite often revolutionary - recognised
worldwide.”
Sponsored by
34
35

A calming
influence U.S.A.
U.S.A.
Learn more at www.AdvitamIP.com
in a chaotic
Name: Michele S. Katz
Law firm name:
Advitam IP, LLC
Country: U.S.A.
Hackers. Counterfeiters. Squatters. When too much of daily professional life is filled
with the stress of IP portfolio management, many companies Position: and entrepreneurs Founding Partner turn
to Michele S. Katz.
Website: www.advitamip.com
Calm. Focused. Thorough. Michele provides a calming approach to managing IP
assets. With nearly two decades of experience, Michele conducts trademark searches,
prepares opinions, and monitors trademarks to confirm that her clients’ intellectual
property rights are used properly and effectively. She manages copyright registration
portfolios in addition to familiarizing U.S. Customs with client designs in an effort
to stop counterfeit goods at U.S. borders. In the area of patents, Michele litigates
complex patent litigation matters including such varied products as textiles, hard
disk drives, airbag covers and interface transfer technology. She also manages patent
portfolios to ensure U.S. and foreign patent protection for clients.
Michele Katz, the founder of the
intellectual property law firm Advitam
IP, LLC, has provided powerful expertise
in client counseling, strategic analysis,
licensing, prosecution and litigation in all
areas of intellectual property (IP) law for
almost 20 years. Her diverse skill set and
drive to deliver results applies equally
to obtaining trademark and copyright
registrations and issued patents, as it
does in obtaining favourable outcomes
in state and federal court and before the
Trademark Trial and Appeal Board (TTAB),
US Customs, and the US Court of Appeals
for the Federal Circuit. As a certified
mediator, Michele has also successfully
brought parties to creative solutions for
their disputes.
She is most passionate about giving back in
a meaningful and measurable way. Her firm,
in collaboration with her family, started a
scholarship fund in the name of her beloved
father, an icon in the IP field, and annually
funds a master’s scholarship in the innovate
sciences at The Hebrew University (Israel). In
the same vein, Michele created a mentorship
program that mentors law students and new
TRADEMARKS | PATENTS | COPYRIGHTS
lawyers all over the world via Skype in all
DOMAIN NAMES | LITIGATION | CUSTOMS
aspects of professional development and
goal attainment.
An advocate of education, Michele is also
on the speaking circuit. She has spoken on
high-level IP topics at global conferences,
such as at the Asian Patent Attorneys
Association’s Annual Meeting in Okinawa,
Japan. She has put much focus on education
to the business owner community as well.
Michele is a big believer that business
owners make better business decisions when
they understand the fundamentals of IP law.
Hence, she has frequently been asked to
speak to new business owners and cohorts
of the music, film, tech incubator, 2112,
Illinois Hispanic Chamber of Commerce-
1871’s LatinX Incubator, as well as the wellestablished
business owners of the National
Association of Women Business Owners.
Getting to them while they’re young is
critical. So since 2015, Michele has served as
the expert on IP law and entity formation
for the Young Entrepreneurs Academy
(YEA!); a transformative after school
program, brought to Chicago by NAWBO
Chicago while Michele was president of that
organisation. The program is geared for
12-17-year-old girls and teaches them how to
select, research, vet, develop, and market a
business.
Her client results have earned her recognition by Super Lawyers Magazine and Illinois
Leading Lawyers. In addition, she is a founding partner of Advitam IP, an
intellectual property law firm. She also is a past president of the National
Association of Women Business Owners (NAWBO), Chicago Chapter.
Bask in the calming influence of effective IP portfolio management.
Contact Michele today at MKatz@AdvitamIP.com or 312.332.7710
Learn more at www.AdvitamIP.com
icheleKatz_WIPW_ad_FN.indd 1
IP world.
As far as accolades go, Michele was
recognised by Super Lawyers Magazine
as an Illinois Rising Star in Intellectual
Property Litigation for 6 consecutive years
and awarded the Corporate Woman of
Achievement Award in 2005, 2006, 2008 and
2010 by NAWBO Chicago. In 2019, Michele
received a nomination to the IAM Strategy
300 – The World’s Leading IP Strategists.
The guide created by IAM Strategy identifies
the individuals who are leading the way
in the development and implementation
of strategies that maximise the value of
IP portfolios. Also, most recently, Michele
was selected as the only US attorney to
be featured in this inaugural issue of the
Women’s IP World annual magazine.
Michele has passions outside of the IP
world as well. She enjoys spending time
with family, including her three 8/14/19 children,
3:27 PM
travelling internationally, refining her foreign
language skills, getting her heart rate up
with outdoor activities such as hiking,
kayaking, rock climbing, rappelling and
ziplining, relaxing with wine and whiskey
tastings and watching movies. Every
summer, she spends a week volunteering
at La Semana, a week-long culture daycamp
for children in elementary through
high school, who were adopted from
Latin America, and their family members.
Fostering cultural understanding has always
been an integral part of Michele’s personal
life and Advitam IP’s business practice.
The Myth of
Work-Life Balance
MicheleKatz_WIPW_ad_FN.indd 1
Instead, we launched into a
twelve-minute dialogue about
work-life balance, an illusory trap
many women fall into – especially
in the male-dominated and very
demanding field of IP. Why is this?
Let’s begin by taking a good, long look at
ourselves. We are entrepreneurs and firm
partners. We are mothers, wives, sisters, and
daughters. We are litigators in the courtroom
and defenders of ideas. We are marathon
runners, readers, and philanthropists. We
are chauffeurs and ATMs. We are paralegals
and secretaries and second chairs looking to
ascend the corporate ladder.
We are many things to many people.
On any given day, we might find ourselves
standing in the center of a courtroom
and in the center of our kitchen – two very
different environments. During the radio
interview, the host asked if I identified as
a woman entrepreneur or as an attorney.
My answer: The woman aspect is front
and center. Gender identity is like cultural
identity. Both speak to who we are. Yes, I
am the founder of Advitam IP. Yes, I have
a PhD in family “logistics” spearheading
questions like “What’s for dinner?” “Have you
seen my keys?” “Will you help me with my
homework?” and “How do you work this?”
“Where are we going on vacation?”
So how do you have a career you love and
still have a life? First, banish the myth. Life
rarely mirrors the perfect balance symbolised
by the scales of justice. I liken our days to
triage with constantly shifting priorities. In
By Michele S. Katz, Founding partner, Advitam IP, LLC
www.advitamip.com
Three . . . Two. . . One. I breathed deep.
Suddenly, the “ON AIR” sign flicked on. My heart
pounded as we went live at WGN, a kingpin of
Chicago talk radio. Intellectual property (IP) was
our topic. We never got to that, though.
a given day, we’re picking up groceries and
filing papers in court. Balance, by definition,
is the state where two things have equal
importance. Tell that to my daughter on a
day she forgot her homework or to a client
staring at a lawsuit. Work-life balance is a
moving target.
I am testimony to that. As a mother of three
children 13 and under, I hope to raise them
as people who care deeply about the world.
That takes time. I am also passionate about
IP law (I’ve crossed four continents in the past
year for Advitam IP). I am happily married,
which means that our relationship requires
attention too.
All this keeps me busy, but my desire to
make this world a better place stretches
my bandwidth even more: I founded a
mentorship program at Advitam IP to help
new lawyers and law students find their
way. I served as president of the Chicago
Area Chapter of the National Association
of Women Business Owners (NAWBO). I
conduct media interviews and speaking
engagements about business matters and IP.
While I don’t have all the answers, I do have
some triage “secrets” that have turned the
work-life paradigm into a happy life. Here
they are:
Ask for help.
I do not have a problem asking for help. If
this is hard for you, start small. Know your
trusted circle and ask. I do litigation and
transactional work. If I’m called into court, I
have to have reinforcements.
TRADEMARKS | PATENTS | COPYR
DOMAIN NAMES | LITIGATION | CUS
Collaborate with those
who share your mission.
My business partner, Richard Gurak, is a longtime
supporter of NAWBO, among other
groups. We support each other’s ambitions.
Embrace imperfection.
Real beauty has flaws. As women, we are
hard on ourselves. Give yourself permission
to be less than perfect. That should be the
new perfect.
Surround yourself with
women who have achieved
what you want to achieve.
NAWBO surrounds me with like-minded,
successful women. Its diversity gives me a
global perspective.
Adopt an all-in philosophy.
If you’re going to do something, give it
everything you’ve got. However, if it doesn’t
go as planned, be flexible. Listen for the
lesson and use it to grow, giving yourself
room to fail (which will likely lead to
something greater).
Perhaps the closing argument is:
Forget work-life “balance” and
accept work-life “imbalance.”
This truthful displacement
moves us closer to a fulfilling life.
The tools and strategies of which
are in our own hands.
36 37

MEXICO CHINA
Hackers. Counterfeiters. Squatters. When too much of daily professional life is filled
with the stress of IP portfolio management, many companies and entrepreneurs turn
to Michele S. Katz.
Calm. Focused. Thorough. Michele provides a calming approach to managing IP
assets. With nearly two decades of experience, Michele conducts trademark searches,
prepares opinions, and monitors trademarks to confirm that her clients’ intellectual
property rights are used properly and effectively. She manages copyright registration
portfolios in addition to familiarizing U.S. Customs with client designs in an effort
to stop counterfeit goods at U.S. borders. In the area of patents, Michele litigates
complex patent litigation matters including such varied products as textiles, hard
disk drives, airbag covers and interface transfer technology. She also manages patent
portfolios to ensure U.S. and foreign patent protection for clients.
Her client results have earned her recognition by Super Lawyers Magazine and Illinois
Leading Lawyers. In addition, she is a founding partner of Advitam IP, an
intellectual property law firm. She also is a past president of the National
Association of Women Business Owners (NAWBO), Chicago Chapter.
Bask in the calming influence of effective IP portfolio management.
Contact Michele today at MKatz@AdvitamIP.com or 312.332.7710
Learn more at www.AdvitamIP.com
A calming
influence
in a chaotic
IP world.
With more than 30 years’ experience
in the IP field and Managing Partner
of the firm since 2008, Laura Collada
is a true strategist and has acted
on several milestone cases. Laura
leads most of the firm’s large and
complex cases. Furthermore, Laura
has a high profile, both locally and
internationally. She is regularly
invited to speak for organisations
such as MARQUES, UIA, ASIPI, FICPI,
ABPI and INTA and is a renowned
teacher at several Law Schools.
She is very active in promoting the
Madrid Protocol and has lectured on
the topic domestically and abroad.
Laura’s practice covers the complete
lifecycle of IP rights. However, since
the recent dramatic changes to the
Mexican legal framework, she has
been increasingly dedicated to the
promotion of the MADRID system
among clients, as well as the new
opposition system that entered into
force. She also continues to design
strategies for clients as well as
litigating.
Laura is the only woman in Mexico who is
the Managing Partner of an IP law firm and a
three-time recipient of the Best IP Lawyer in the
Latin America Award of Euromoney’s Americas
Women in Business Law. She has written about
IP for national newspapers and international
IP magazines. Laura is also a Council Member
of MARQUES and project leader in the
International Trademark Team. Furthermore,
she leads the Madrid Protocol Committee
at ASIPI. She is Co-Chair of the Standing
Committee on Geographical Indications in
AIPPI, as well as a member of the Geographical
Indications Committee of INTA, and a member
of national and international professional
associations, including AIPF, ASIPI (Co-Chair of
the Geographical Indications Committee and
Special Commissions Coordinator of the Madrid
Protocol), AIPLA (member of the Board), ECTA
and PTMG.
Name: Laura Collada
Law firm name:
Dumont
Country: Mexico
Laura advocates for women’s equality by
seeking out female candidates and offering
top positions to female lawyers. She is involved
in several associations (AIPLA, UIA), creating
awareness by speaking out about “glassceiling”
issues at events, including the AIPLA
Women in IP event that took place at Dumont’s
office in Mexico City three years in a row (2016,
2017 and 2018).
Dumont, led by Ms. Collada, proposed to AMPPI
(AIPPI Mexican Chapter) to create a women’s
committee to empower IP women lawyers, to
research the sociological ground why there
are so few positions for women in executive
positions as well as to create awareness among
the firms on our field (IP). The creation of the
committee is a reality today. It started working
on March 2017, and Ms. Collada was the Chair
of the Women’s Committee for two years (2017-
2019).
She is ranked in CHAMBERS LATIN AMERICA
and CHAMBERS GLOBAL as leading lawyer; THE
LEGAL 500 LATIN AMERICA; as recommended
lawyer; IP STARS as Patent Star, Trademarks Star,
and Top 250 Women in IP; WORLD TRADEMARK
REVIEW 1000, as leading lawyer; EXPERTS
GUIDE, as Patents and Trademarks leading
lawyer.
Laura was invited to be part of the expert team
to work on the wording of the amendments
to the Mexican Industry Property Law. She
was asked to write, among all the experts,
the initiative of law as well as the exposition
of reasons. This project of amendments has
been introduced and presented to the Mexican
House of Representatives and turned into law.
As the only female Managing Partner of an IP
firm in Mexico, Ms. Collada acts as an icon to
women who wish to advance their careers in
this field. The women working at Dumont often
choose to stay long-term in order to improve
their knowledge and expertise here, since they
are met with far less bias than is often found at
other firms in Mexico.
This has made Dumont known as a firm in
which women are empowered, acknowledged,
and groomed as lawyers.
Position: Managing Partner
Website: www.dumont.mx
38
TRADEMARKS | PATENTS | COPYRIGHTS
DOMAIN NAMES | LITIGATION | CUSTOMS
39

MEXICO CHINA
As mentioned before, there is not
a universally accepted definition
for the term, but it always relates to
the use of art, imagery, symbology,
artifacts of cultural expressions
with significance to a minority or
dominated group by someone who
does not belong to that group.
So, it must be a goal to enhance
international instruments to protect
these cultural expressions. At a
national level, many countries
are doing an excellent job, but in
the meantime, we must appeal to
educate people on what cultural
appropriation is. It is not a trivial
issue.
Why is everybody
talking about
cultural
misappropriation?
It is an issue that has critics and
defenders and many blurry lines, and
depending on the author, it will be
related to white supremacy, western
world, xenophobia and such. We often
hear great arguments defending
one position or the other and more
frequently, arguments without any
knowledge or understanding of
what is essential to highlight. It is an
issue that needs context, as well as
relevancy to current culture. It is a
sensitive issue which depends on the
eye of the beholder.
Who owns culture?
In modern free society, it is supposed that
cultural exchange enriches our society. It is
a vital part of the culture and its grounds on
the cultural appreciation. However, there is a
very fine line between cultural appropriation
and cultural appreciation; they are entirely
different concepts.
As discussed by Laura Collada, Managing Partner, Dumont
www.dumont.mx
Cultural appropriation also called cultural
misappropriation is a concept that it is not well
defined and that when defined, pretty much depends
on the source, of which elements and political
position they are referring to phrase such a concept.
There are so many things that we “borrow”
from different cultures: Food, for example.
In the western world we like Asian food
or Mexican food and many times it is not
the real thing, it is inspired in a particular
cuisine; however, I genuinely believe that
cuisine exemplifies cultural exchange at its
best. Being a Mexican, most of the time, I
do not like the inspirations or the look-alike.
However, a part of my heart appreciates that
it is likable; thus, people try to imitate it or
are being inspired by it. Regardless of that,
in my country, it would never be considered
as original. The same happens with music
(and its performers: Katy Perry, Miley Cyrus,
etc.) as well with hair styles and hairdressers
(dreadlocks, braids, mohawks, etc.), fashion,
etc.
There is a very fine line between the critics
speaking about cultural misappropriation
and defenders talking about cultural
appreciation.
Every single year around Fashion week,
important fashion shows, award season,
and lately prom season, we hear about this
topic. The qipao dress, the Chinese bag, the
white singer winning R&B awards, Katy Perry,
Carolina Herrera using Mexican imagery,
Coachella and native American symbols,
UK chefs cooking authentic Asian food and
the list goes on and on. Not forgetting,
Halloween and the insensitive costumes!
So, what is it? Is it cultural appropriation or
just paying homage? As mentioned before,
the tricky thing to establish is that if it is
hurtful and offensive to ethnic minorities, it
should not be done. Nevertheless, expressed
like this, it seems only to be a moral issue, and
it is not. Usually, expressions of culture are
protected by intellectual property.
To define cultural appropriation, it means the
use of one culture and its defining elements,
by another culture. Oxford Reference defines
it as: “A term used to describe the taking
over of creative or artistic forms, themes,
or practices by one cultural group from
another. It is in general used to describe
Western appropriations of non-Western or
non-white forms and carries connotations
of exploitation and dominance.”
It is important to highlight, as a
foundation for making laws related to this
topic, that appreciation of culture requires
understanding and respect; appropriation
lacks those things. There must be certain
engagement with the culture to appreciate
it. Borrowing is not inherently wrong, and
cultures must not be reduced to stereotypes.
Some authors consider that trends are
not trends; they are someone’s culture.
Trends usually cherry-pick things from a
minority culture and make them socially
acceptable when the dominant culture
adopts it and finds it fashionable, cool,
innovative, inspirational, etc. Usually, this
cherry-picking will be profitable for the
trendsetter. Moreover, other authors speak
about assimilation, which in these cases is
not suitable. Assimilations most often are a
means of survival.
So, where do we stand?
It is difficult to say. Context, geography,
and current culture are important when
defining what to protect and how to protect
it. A free modern society promotes cultural
development and the enrichment of
culture; however, in a society like this, many
voices accompany it: freedom of speech,
indigenous rights, western supremacy,
and so on. Global modern world culture is
being created every single day, people share
their culture, and sometimes they give it up
(because of political, economic, etc. reasons)
but it transforms every day, regardless of the
reason. Perspective is valid.
So legally speaking, what
should be done?
It is not a trivial topic, and there are many
angles, many perspectives, there is no
way to please everyone. WIPO has been
working on the issue and recognises the
protection as sui generis. In 2008, The WIPO
Intergovernmental Committee on Intellectual
Property and Genetic Resources, Traditional
Knowledge and Folklore commissioned two
gap analyses on the protection of traditional
cultural expressions/expressions of folklore
and traditional knowledge. In 2017, the
WIPO General Assembly requested the
Secretariat to “update the 2008 gap analyses
on the existing protection regimes related
to Traditional Knowledge and Traditional
Cultural Expression. It is various works
advising policymakers. WIPO suggests
treating traditional cultural expressions as
intellectual property, where holders would
have the possibility to control access and
use of these rights by third parties, as well
as using intellectual property principles
and values to prevent unauthorised or
inappropriate uses by third parties (namely
misuse and misappropriation). It is a sui
generis protection adapted to respond to the
features and needs of these rights.
Protection would consist of:
Positive protection that will enable
the granting of rights that empower
communities/nations to promote and
control their uses by third parties and benefit
from their commercial exploitation as well
as defensive protection in order to stop
people outside the community/nation from
acquiring intellectual property rights over
these rights.
WIPO has also analysed and suggested
which are the key questions with the view
of developing an IP strategy regarding
the protection of traditional knowledge
and traditional cultural expressions. As an
advisor to policymakers, the lawmakers
should decide if it should be protected as a
sui generis intellectual property right, and
if so, define the objectives and the legal
means of their protection. This should be
done by identifying the traditional cultural
expressions and the holder’s interest,
assessing legal systems of protection and
considering as an option - sui generis, as
well as assessing the implementation. Also,
governments should identify the interested
parties surveying the cultural expressions
of the country as well as the indigenous and
local communities that hold, practice, and
maintain such rights. It should also assess the
expectations of using them as a vehicle for
economic development.
Also, we must highlight that between a sui
generis IP system and a traditional IP system,
there are most certainly gaps. Obviously,
without any harmonisation, there are at an
international level, obligations, provisions,
and possibilities to protect these rights. The
gaps refer to an unmet economic, cultural, and
social need. Moreover, there is a conceptual
divide. A traditional IP system would have
certain shortcomings; conceptions such as
ownership, fixation, originality, exclusive
rights are entirely different when referring to
traditional expressions. Cultural expressions
were created primarily for spiritual, religious,
tribal purposes which defer quite much to
the objectives of traditional IP. There could
indeed be other non-IP mechanisms such as
laws about cultural wealth, dignity, human
rights, heritage preservation, etc.
We must understand that cherrypicking
cultural elements from marginalised
groups without knowing or caring what the
significance is of such elements, might hurt
and affect that group. History shows that
people share their culture, and sometimes
they are forced to give it up, it can be
disempowering, dehumanising. It is essential
to take responsibility for your actions that
can cause harm to other people.
For example, I am Mexican, and I have never
understood why 5 de Mayo is celebrated
in the United States. It is celebrated by
drinking a lot, eating guacamole, wearing
huge sombreros and fake mustaches. It is not
Mexican Independence Day (September 16),
and that is a huge misconception, and most
Americans do not know what that holiday
commemorates. The date is observed to
commemorate the Mexican Army’s victory
over the French Empire at the Battle of
Puebla, on May 5, 1862. The victory of the
smaller Mexican force against a larger French
force was a boost to morale for the Mexicans.
A year after the battle, a more significant
French force defeated the army and Mexico
City soon fell to the invaders. What is the
reason to celebrate? It is said that at the
beginning of the last century some Mexican
consulates in the USA used to celebrate
and from there it picked up as something
to commemorate. Usually, it stereotypes
Mexicans and its traditions; it should not be
like that; this is my personal opinion. Same
happens with ninja or geisha costumes or
traditional tribal wear, such as penachos of
indigenous tribes, or some headdresses or
tribal Polynesian tattoos. Appropriation does
not go both ways.
We have to understand that what is trivial
for one person, might be very important
for someone else; each perspective is
valid. We should never invalidate, and we
should be cautious with creative licenses.
Sharing or borrowing is acceptable if we
understand the significance and value of
those cultural expressions and use them
properly. We should not create resent and
blurry, fine lines should be balanced.
So next time, appreciate cultural
expressions: you do not have to
own it, to do it.
Bibliography:
https://www.theatlantic.com/entertainment/archive/2014/05/
cultural-appropriation-in-fashion-stop-talking-about-it/370826/
https://aestheticdistance.com/blog/cultural-appropriation
https://www.bustle.com/p/7-things-you-might-not-realize-arecultural-appropriation-that-are-60679
https://www.lawliberty.org/2019/02/26/cultural-appropriation/
https://www.wipo.int/tk/en/folklore/
https://www.wipo.int/tk/en/igc/issues.html
40 41
.

COSTA CHINA RICA
Name: Gabriela Bodden
Law firm name:
Eproint
Country: Costa Rica
Position: Partner
Website: www.eproint.com
Whilst taking an IP course in law school,
I discovered what would define me
professionally. I realised that individuals and
companies invested time and money into
creating products that, in turn, drove the
economy. My aim was to become a lawyer, to
distinguish myself and assist individuals and
companies in the adequate protection of their
IP rights.
I practiced as an attorney within the Legal
Department of Customs in Costa Rica for several
years, where I learned all aspects of border
protection, the different regimes that affect
the importation and exportation of goods.
During that time, I drafted many important
projects that are still today applicable in Costa
Rica within the General Customs Directorate.
This rich knowledge has become useful when
handling complex anti-counterfeiting cases.
Eproint is the company of which I am the only lady
partner. We were founded in the year 2000 by my
current partner Aaron, and I joined him in 2008. I
aimed to launch the Caribbean practice and to take
our international practice to the next level. Today
Eproint is one of the most important full IP service
law firms that offer a single point of contact for the
Caribbean and Latin America. We are, in fact, the
only service provider that has an actual physical
presence in the Caribbean, and this changes the
equation of being an intermediary.
I have been an active practitioner in the IP arena for
over 20 years. Luckily my expertise has permeated
all areas of this fascinating world of both industrial
and intellectual property with a particular focus
on anti-counterfeiting in the Caribbean and Latin
America (over 40 jurisdictions).
Besides having obtained a law degree, I also hold
a degree in business management, an LLM in
Intellectual Property, and have completed various
short specialisation courses such as with the
University of Barcelona.
The IP field is in flux, and I am heavily involved
with the AIPPI Regional Group (the Caribbean and
Central America) of which I am the Secretary, and I
regularly attend INTA, MARQUES, APAA, ASIPI and
other important events in the IP world.
Being key in the development of our business, I
have faced many challenges along the years, as
running a business can be risky as it entails the
unforeseen. Along the years, I have embraced our
challenges with a smile and extreme hard work in
order to guarantee success.
My focus as a professional is to be behind our
clients 100%, and I assure you that if you are a
company with ambition, I can help you fulfill it and
accompany you along the way!
I do not do this alone as I am surrounded by an
amazing team of committed professionals, loyal to
our clients’ projects, and together we establish a
work environment and culture that encourages our
team members to deliver a high-quality service,
along with legal and technical solutions.
I focus on excellence, and this is reflected by the
extensive portfolio of clients that I represent, and
with thanks to them, I have been continuously
ranked by Legal 500, Chambers and Partners and
WTR1000 as a leading professional in Latin America
and the Caribbean.
Chambers and Partners highlights:
“…commended by clients for her grasp of IP
matters, as one highlights: “I was impressed
by her knowledge and enthusiasm; she’s
professional and international in her outlook.”
Her main areas of activity include trademark
filings and enforcement actions…”
Legal500 comments as follows: “… The practice is
co-led by the ‘extremely flexible, committed and
supportive’ Gabriela Bodden …”.
WTR100 comments: Eproint has the broadest
geographic footprint of any firm in the WTR
1000 Caribbean section; it has offices in Belize,
the Cayman Islands Costa Rica, the Dominican
Republic, Guatemala, and Honduras …
proactive, ultra-responsive, efficient, and
solutions-oriented, Gabriela Bodden has a
profound knowledge of international trademark
law…”
Currently, the majority of my work is still purely
client-facing, business development and in the
management of the group that assists me and
despite the success of my firm, I don’t get carried
away as I know we are only as good as our last job.
42
43

ARGENTINA
CHINA
Name: Melisa Litvin
South America
Law firm name:
Litvin Marzorati Legalis
Country: Argentina
Position: Founder Partner
Website: www.lmlegales.com.ar
Sponsored by
Melisa Litvin, the founder partner of LITVIN
MARZORATI LEGALES, is one of the preeminent
IP-service law firms in Latin America with a
long-established reputation for superior legal
work.
Melisa was associate in the intellectual property
department of the firm Allende & Brea for 7 years
and years ago, with drive and passion created her
own intellectual property firm, Litvin Legales, and
today with the addition of new partners renamed
Litvin Marzorati Legales.
Melisa has been practicing intellectual and
industrial property law for over 17 years and
has experience in all areas of IP law including
trademarks, patents, trade secrets, e-commerce,
copyright, unfair competition, franchising, domain
names, and litigation.
Melisa received her law degree as well as her
postgraduate certification in high-technology law
from Universidad Torcuato di Tella, city of Buenos
Aires. Melisa has completed numerous specialised
courses in the Intellectual Property arena both
in Argentina and abroad. She also encourages
her team to remain educated and informed on
innovations in Intellectual Property.
She advises large, medium, and small companies
permanently or acts as special counsel in various
commercial transactions carried out in Argentina
and abroad. Melisa also litigates and counsels her
clients. She handles matters involving trademark,
copyright, trade secret, and patent litigation
being an expert in Argentinean and international
trademark protection and always preparing
license and technology transfer agreements.
Melisa is also a pioneer in Argentina working with
entertainment and media companies which rely
on the latest online technologies to distribute
and market products and services, as well as
advising internet and technology companies in
transactions related to the distribution, licensing
and use of digital content and the enforcement
of intellectual property rights in the digital
environment.
Regarding IP Litigation, Melisa has represented
clients across a wide range of industries.
Melisa has a long tradition in the area of
Intellectual Property that dates back to the very
foundation of the firm — consisting of highly
experienced attorneys and agents who provide
an outstanding track record of experience, skill,
efficiency, and counsel.
Melisa maintains a robust global presence,
regularly attending several international IP
Congresses, including INTA, ASIPI, and MARQUES
meetings. As a member of INTA’s Public and
Media Relations Committee, Melisa understands
the importance of maintaining professional
relationships with lawyers and firms worldwide.
You can read in Legal500 that Litvin Marzorati
Legales receives rave reviews for its ‘outstanding
service,’ ‘business-oriented legal advice’ and
‘great ability to structure cost-effective IP
strategies.’ Trademark matters are a notable
sweet spot, with founding partner Melisa Litvin
lauded as a ‘trademark expert.’
Most recently, Melisa Litvin was nominated
for the Chambers Women in Law Awards 2018
for Argentina Lawyer of the Year. She has also
featured in several articles in the Argentinian
magazine Noticias, where she addresses current
issues in Intellectual Property Law and educates
businesses on the importance of proactively
protecting their intellectual property assets.
It has been a constant working path for her in the
face of adversity, not only because she is a woman
and a mother of three. She has always known
how to achieve a balance between her personal
and professional life. For her, one of the keys is to
have efficient and reliable team-work. For Melisa,
relations with her employees and her clients are
very important.
International rankings and publications continue
to show that LITVIN MARZORATI LEGALES is
one of Latin America’s leading law firms in the
intellectual property practice area. Melisa Litvin
continues maintaining a strong global presence
building professional relationships with lawyers
and firms worldwide.
LITVIN MARZORATI LEGALES is very proud
of its IP professionals, who in addition to their
recognised work for clients, maintain a leadership
role in the local and international intellectual
property community
Furthermore, LITVIN MARZORATI LEGALES and
especially, founder partner Melisa Litvin continues
to be recognised in the leading legal directories
such as Chambers, Legal500, WTR1000, with
nominations to both, Chambers Women in Law
and Luxury Law Awards.
44
45

COLOMBIA
Name: Claudette Vernot
Law firm name:
Estrategia Juridica
Country: Colombia
Position: Director & Attorney at Law
Website: www.estrategiajuridica.co
Claudette Vernot has focused her career on studying and improving brand
protection programs and IP litigation strategies in Colombia. After receiving
her Law Degree from the Universidad Externado de Colombia, she completed
a postgraduate diploma in the University Pantheon Assas in Paris. She is the
Chair of the Anti-counterfeiting Sub-Committee for the Latin-American and
Caribbean region in INTA and is also a member of ACPI, IPCA, and APRAM
associations.
Ms. Vernot is an expert in the protection of trademarks throughout Latin America and Central
America. She advises several companies at the regional level in the definition of strategies to
protect trademarks and enlarge markets while providing solutions to fight contraband and
counterfeit. Ms. Vernot was Regional Outside Counsel for five years, assisting the General Legal
Counsel in the fight against the Illegal Trade for the Company PMI, specifically covering the
Latin American Region.
INTELLECTUAL
PROPERTY
brands patent
trademarks invention
licensing copyright
protection
BRAND PROTECTION AND ENFORCEMENT
IN COLOMBIA
Corporate Law
Our firm is experienced in
the handling of any sort
of corporations. It also
has the capacity to
incorporate companies
in Colombia and abroad.
Commercial Law
The department of
Commercial and Corporate
Law at ESTRATEGIA JURIDICA
offers comprehensive
advisory service in those
aspects typical of companies
or corporations.
Intellectual Property Law
ESTRATEGIA JURIDICA provides
review, evaluation, assesment
and management of the
intellectual property rights of
our clients.
Competition Law
The attorney at ESTRATEGIA
JURIDICA have specialized
training in the fields of unfair
competition and restrictive
competition practices.
Bogota D.C, Colombia Calle 90 # 12 - 28 (110221)
Tel: (57 - 1) 638 10 71
E-mail: estrategia@estrategiajuridica.co
www.estrategiajuridica.co
Criminal Law
ESTRATEGIA JURIDICA has
the capacity to advise
clients in all those issues
regarding possible legal
infractions covered by our
criminal ordainment.
Litigation
ESTRATEGIA JURIDICA
enjoys ample expertise in
the search of solutions
regarding processes in
the area of contentious
administrativa, civil and
commercial law.
Claudette Vernot was the pioneer lawyer in Colombia for IP criminal cases
for brands such as Louis Vuitton, Levi’s, Nike, Adidas, and Microsoft. New
actions such as Customs Border Measures and Consumer law were part of
the latest strategies for brand holders.
She began programs for training Customs officers, members of the Police
force, and different agencies in 1999.
Her experience in the Intellectual Property field makes her one of the
most recognised attorneys in Colombia. She has trained her team to
understand that the client is a business partner and that they must
collaborate to find strategies to protect their IP Portfolio. She works for
several brand holders, advising the Latin American Region in order to
find legal strategies against transnational counterfeiters. She focuses her
programs in the main Ports of the country and has actively collaborated
with The National Tax and Customs Direction in the modifications to
Customs Law related to border measures in the country.
She has worked as a professor in the area of Commercial Contracts
related to Industrial Property Rights, Copyrights and New Technology at
Universidad Externado de Colombia.
Ms. Vernot is fluent in Spanish, English, French, and Italian.
Ms. Vernot first embarked in her practice in IP Law in a French Company -
SODIAL in Paris. This was followed by working for three years in a Bogota
law firm - Cavelier Abogados. Ms. Vernot then founded her own practice,
Estrategia Juridica, in 1998.
Estrategia Juridica’s primary focuses include the litigation of IP cases,
Consumer Law, Unfair competition, Brand Protection Programs, and the
Enforcement of IP rights.
Practice areas include Brand Protection, Criminal and Civil Law,
Trademarks, Patents, Copyrights, Consumer Law, and Data Protection.
Sponsored by
I P I N N O V A T I O N S E R V I C E
P R O V I D E R
PROFILES
&
ARTICLES
Patent - Trademark - Renwals - Brand protection Solutions & Services
46
47

UNITED CHINA KINGDOM
led to the development of COBOL, an initial highlevel
programming language which is still in use
today. While working on the Mark II computer,
Hopper and her associates found a moth stuck
in a relay; disrupting communications. This has
been suggested as the first instance of literal
‘debugging.’
Contrastingly, figures show that fields such as mechanical elements and engines, pumps and turbines
are some of the least represented by women, a trend which has been apparent since 2000. Although
the share of women inventors in mechanical elements and engines, pumps and turbines were joint
lowest in 2018 out of all the fields, both of these have shown exponential growth in women inventors
rising by 69 and 63 percent respectively, which may indicate that government legislation and STEMencouragement
is having a positive effect on gender representation equality in these areas.
Women
of science
By Freya Shepherd, Member of the Biotech team at Patent Seekers
www.patentseekers.com
Bio: Freya Shepherd (Biomedical
Science (Clinical Biochemistry)
MSc) is an established member
of the Biotech team at Patent
Seekers (A leading patent research
company based in the UK and
Canada). She has worked on
patent search cases from standard
Toe-in-the-Water and Patentability
searches, through to complex
Freedom to Operate and Invalidity
searches. Her specialisms are
therapeutics, surgical devices,
pharmaceuticals, and gene
modification.
Freya is passionate about women
in science and intellectual
property and relished the
opportunity to write an article
for the inaugural edition of the
Women’s IP World.
“A ship in port is safe, but that is
not what ships are built for. Sail
out to sea and do new things.”
— Grace Hopper
Women inventors, scientists, and engineers
have discovered countless revolutionary and
life-changing inventions that have caused
unprecedented breakthroughs in the history
of the world. Why is it then that when we are
asked to name a famous inventor, it is Thomas
Edison, Benjamin Franklin or Alexander
Fleming who comes to mind? These men
undoubtedly made gigantic steps for mankind
and science, and we are still very reliant on
their inventions today. However, is their work
any more noteworthy than that of Stephanie
Kwolek, the inventor of Kevlar, whose groundbreaking
work has protected countless army
and police personnel across the world? Or
that of Hedy Lamarr, a Hollywood actress
who invented a secret communication system
used by the US navy in order to send covert
messages to sea?
Over time, women inventors have become more
documented and well-known. However, not
nearly enough tribute, recognition or honour has
been accredited to some of the greatest minds
who have produced some of the most innovative
ideas - without which we would not be in the
advanced scientific place we are today.
Some of the most influential inventions to
reach our markets have come from the minds
of female inventors; however, innovation and
design have traditionally been viewed as maledominated
environments. In recent years,
significant efforts have been made to address
this imbalance by promoting STEM (science,
technology, engineering, and mathematics)
subjects to women in education and to introduce
government-led legislation to ensure men and
women are equally represented in the workplace.
This article will explore some of the most
significant inventions of the last 150 years and
the female minds behind them, and using patent
statistics, will explore how the current patent
landscape is progressing towards an equally
represented field.
One woman who was arguably far too
advanced for her scientific day, so much so
that it was near 100 years until her ideas were
fully understood and benefited from, was Ada
Lovelace - a mathematician, scientist, and world’s
first computer programmer. In the 1840s, in
collaboration with Charles Babbage, Lovelace
suggested to Babbage that she should work
out a language for the analytical engine that
Babbage was creating, based on her advanced
knowledge of mathematics. The language she
created (“Ada”) is now considered to be the first
computer program. She predicted that such a
language would be able to compose complex
music, produce graphics, and could be harnessed
for both practical and scientific use – ideas
exponentially ahead of her time. Whilst Ada
eventually received recognition for her computer
language “Ada” it took a long time for her
significant contribution to be recognised.
Rear Admiral Grace Hopper was an American
computer scientist, receiver of the Presidential
Medal of Freedom and one of the very few women
to ever reach the rank of Rear Admiral. After
joining the US Navy during the Second World War,
Hopper was assigned to work on a new computer,
called the Mark I. By the 1950s, she was at the
forefront of computer programming. As one of the
first programmers of the Harvard Mark I computer,
she was a pioneer of computer programming and
invented one of the first linkers (originally called
a compiler). She promoted the idea of machineindependent
programming languages, which
Hedy Lamarr was not your average 1940s
Hollywood film star; she developed a secret
communications system which would later be
used by the US Navy. Born in Austria, where she
began her Hollywood career - which included a star
on the Hollywood Walk of Fame - she then moved
to the United States where she met composer
George Antheil. Together they developed a radio
guidance system which used frequency hopping
spread spectrum technology to overcome the
possibility of interference. Their invention was
granted a patent in 1942 (US2292387A) and is
patented under her married name, Hedy Kiesler
Markey, however, the technology was difficult to
implement at the time, and the Navy did not like
to use ideas from outside the military. In 1962, a
current updated version of their invention finally
appeared on Navy ships.
Although the Navy was slow to implement the
technology, various spread-spectrum techniques
are incorporated into Bluetooth technology and
are similar to methods used in legacy versions
of Wi-Fi. After 50 years, the Navy gave her
recognition for her ingenious invention which
included an induction into the National Inventors
Hall of Fame, in 2014.
The National Inventors Hall of Fame, which works
in collaboration with the United States Patent and
Trademark Office (USPTO), honours the history of
innovation with its some 581 inductees. However,
only 39 of these are women – does this reflect
the recognition women inventors have been
given throughout history? The National Science
and Technology Medals foundation follows suit
with a staggering low number of 61 out of 707
of its inductees being women. This is not a true
reflection of how many of the innovative ideas we
rely on today that were developed by women.
The Patent Corporation Treaty yearly review
(2019), published by the World Intellectual
Property Organisation, looks into current trends
of those patenting under the act. This year it
published that in 2018, women accounted for
17% of all inventors listed in PCT applications.
Fields of technology related to the life sciences,
such as biotechnology and pharmaceuticals,
have comparatively high shares of women
among inventors. Women account for over half
of contributions in the biotechnology field in
2018, a figure which could be suggested will rise
as figures have done so year on year since 2000
although more women than men are now going
to university (in the academic year 2016/2017),
ten percent less women than men are studying
scientific subjects which could indicate that the
climb to equality might be slowing down.
Figure 2 – Percentage increase in the share of applications with at least one women inventor by technology, from the period
2000-2018. Source: WIPO statistics database.
However, not all great inventions have come from women who studied at higher education level or
those who studied scientifically. For instance, Josephine Cochran invented the dishwasher - a socialite
with no formal education who invented the first useful dishwasher in 1886 out of necessity to prevent
her servants from breaking her fine china. Cochran went on to found her own company to manufacture
her dishwashers, which eventually became KitchenAid.
The gender gap is still widespread. Even in progressive economies, there are still relatively low shares
of PCT applications by women inventors, for example, in 2018, in the United Kingdom, only 26% of PCT
applications had women inventors. Women may still be coming up against the notorious ‘glass ceiling.’
However, the landscape is undoubtedly improving; in all but one of the top 20 contributors, there have
been Figure impressive 2 – Percentage improvements; increase in the share Sweden of applications and Finland with at least have one increased women inventor their by figures technology, by over from the 100 period percent
in the 2000-2018. last eighteen Source: WIPO years. statistics This database. suggests that although there is still a gap across the globe; the level of
women inventors has risen, and this will likely continue.
Figure 3 – Share of PCT applications with women inventors for the top 20 origins (2018) with the percentage difference
between figures in 2000 compared to 2018 (value on the right). Source: WIPO statistics database.
Figure 3 – Share of PCT applications with women inventors for the top 20 origins (2018) with the percentage difference
between figures in 2000 compared to 2018 (value on the right). Source: WIPO statistics database.
In conclusion, the patent world is progressively recognising more women inventors,
although this progression is more evident in some subjects more than others, and in
some countries more than others. The drastic increases over the last eighteen years
are encouraging and have led to a varied landscape from which we can conclude
that women will in time play a more significant role in innovation, engineering, and
design but at what point men and women become equals on this level is unknown.
Note In order to attribute gender to inventors’ names recorded in PCT applications,
WIPO produced a gender–name dictionary based on information from 13 different
public sources. Gender is attributed to a given name on a country-by-country basis
because certain names can be considered male in one country but female in another.
[from World Intellectual Property Indicators]
* Quote originally attributed to John Augustus Shedd, although adopted as a motto
by Grace Hopper.
Figure 1 - Comparison between the two highest and two lowest fields of technology for shares of applications with
at least one women inventor. Source: WIPO statistics database.
48 49

UNITED CHINA KINGDOM
Name: Ann Chapman-Daniel
Company name:
Minesoft
Specialist global search services for patent attorneys,
universities, technology companies and SMEs
Country: United Kingdom
Position: Co-Founder &
Managing Director
Website: www.minesoft.com
Patentability/Novelty Search
Infringement/FTO/Clearance
Invalidity/Patent Busting
State of the Art
Patent Mapping/Landscapes
Patent Monitoring
Patent Status
Competitor Analysis
Head Office:
Newport, UK
Tel: +44 (0)1633 816601
Email: mail@patentseekers.com
North America Office:
Toronto, Canada
Tel: +1.416-847-7309
Email: NA@patentseekers.com
Before starting Minesoft, the online
patent software company, a love of
language and literature inspired Ann
Chapman-Daniel to choose publishing
as a career at International Thomson’s
Marketing Group in London. Partly
due to her knowledge of German,
Chapman-Daniel was asked to work on
their international sales & marketing
team (when they first moved into the
online database business in the 1980s),
launching Derwent World Patents Index
online. Although she left the IP industry
for a time, Chapman-Daniel returned
to patents and sci-tech publishing with
France Telecom Group (now Questel-
Orbit). Here she worked as Director and
Managing Director for 3 years before
taking the leap with husband, Ophir
Daniel, to start their own business:
Minesoft.
Minesoft has since gone through 20 years
of innovation and development – an
achievement in itself. In 2003, Minesoft and
RWS launched PatBase, a new searchable
database of patent documents designed
by experts in the complex art of patent
information research. Since the first critically
acclaimed public demonstrations in 2003,
PatBase has gone on to attract over 80,000
users worldwide.
Over the years, Minesoft has expanded
its suite of products to include a range
of alerting and tracking tools, chemical
searching, and more. Most recently
launching IPShare, a new collaboration tool
aimed at IP law firms to work together on
projects and share insights with clients, and
Pat-KM, a workflow-based patent knowledge
management system.
Ann and Ophir started the company around
their kitchen table and have grown the
company every single year for 21 years, now
with clients and offices all over the globe –
in every corner! With leading corporations,
patent offices, and law firms among its
customers, Minesoft has come a long way
from its humble beginnings. It has achieved
this without taking on outside investment
but instead in always being forward-thinking
in growing the company’s network and
locating new partners.
A testament to Minesoft’s ongoing
innovation and the dedication of the
development, sales and support behind the
scenes, has been winning the Queen’s Award
for Enterprise in 2009 and again in 2015. At
the end of 2018, Ann Chapman-Daniel took
home the award for Female Entrepreneur
of the Year in the Regional Chamber of
Commerce business awards and was more
recently named Information Professional
of the Year by the German publication,
PASSWORD.
With Minesoft going from strength to
strength in the 20 years since the company
was first founded, Ann Chapman-Daniel
plans to continue travelling widely to
learn about our globe and help develop
new technologies for the future; she looks
forward to spending much time both sides of
the Atlantic and Mediterranean Seas.
50
www.patentseekers.com
51

Unilever, Nestlé, and Coca-Cola were some
of the well-known corporations that were
recently named and shamed by international
development agency, Tearfund. Contributing
3 million tonnes (Coca-Cola), 1.7 million tonnes
(Nestlé) and 610,000 tonnes (Unilever) of plastic
packaging in 2018. All 3 companies have since
pledged to drastically reduce their plastic
footprint over the next 5-10 years. Coca-Cola’s
World Without Waste strategy, for example,
aims to collect a bottle or can for each one sold
by 2030. This is good news for Norway-based
company Tomra, which dominates the market
for vending machines that collect containers for
recycling (shares in Tomra have unsurprisingly
tripled over the past three years!).
Meanwhile, other companies like BP are trying to
find fixes internally, BP has described their new
chemical recycling process as a “game-changer”
and plans to commercialise it by 2025.
By interrogating clean and comprehensive
patent data, it’s easy to see which companies are
putting their money on the table and investing
in this area, rather than just ‘talking the talk’.
Using a commercial database with integrated
analytics, like PatBase, makes it easier to visualise
and examine these larger datasets to better
understand the technology landscape.
What is Solid Waste
Management?
Solid waste management is the handling of
discarded materials; including paper, plastic,
glass, electronics, food, chemicals, etc.
UNITED CHINA KINGDOM
Taking out the trash:
big industry starts clearing up the mess
made by our ‘ throwaway’ society
Written by Moira Sivills, Business Development Executive,
& Caitlin Kavanagh, Marketing Executive, Minesoft - www.minesoft.com
Over recent years, the public’s awareness of the impact
of pollution and climate change has grown. As a result
of this, big industry has been forced by governments
and consumers alike to step up its game in reducing
plastic usage, finding ways to recycle potentially
toxic items like chemicals, aluminium or plastics, and
mitigating their own carbon footprint.
Although we have always produced waste, the rapid growth of the world population, currently at 7.7
billion, coupled with societies becoming richer and more consumeristic has given rise to a ‘throwaway’
culture. To protect the public and the environment from the harmful side effects of waste, research and
development into solid waste management is crucial to establish new production and consumption
patterns.
In the following sections, PatBase Analytics V2 is used to show the key trends in climate mitigation
technologies related to solid waste management, especially over the period 2012 to 2019. The dataset
used consists of CPC classification codes such as waste collection, transportation, transfer or storage,
waste processing or separation, landfill technologies, bio-organic fraction processing and reuse,
recycling or recovery technologies. This search produced 142,642 results as of August 2019.
China leading the way in solid waste management technologies
An initial ‘Years by Jurisdiction’ analysis was carried out to visualise patenting activity by country over
the last 25 years. Patent activity from 1995 was on a slow upward trend with Japan being significantly
ahead of other jurisdictions by 2000. The rise in the number of patent filings can be explained by the
emergence of the United Nations Framework Convention on Climate Change (UNFCCC) in 1992. They
raised concerns worldwide over the necessity of uniting and combatting human interference
with the climate system. This led to more and more ‘green technologies’ coming out of the research
labs and being integrated into society.
Figure 1: Solid Waste Management, Recent 25 Years Analysis by jurisdiction
However, since 2010, China’s share of the market has increased exponentially, surpassing Japan, as the
leading innovator in this technology area. Being a global manufacturing powerhouse, China generates
more waste than any other country; this is likely due to China’s growing consumerism. For example,
consider the popular Chinese food delivery apps, MeiTuan, and Ele.me, these platforms on average
conducted 34 million daily deliveries in the first half of 2018 – the level of plastic waste from all those
orders would be huge. In order to offset their increasing waste production, several waste management
companies have been coming up with new ideas; hence, we can observe the surge in the number of
new patent families.
Not only does China produce the most waste, they also import a lot of waste from other nations.
However, as of January 2018, China’s National Sword policy came into effect restricting imports of 24
different types of waste material. The effects of the ban could be a catalyst for change, an opportunity
for countries in the West to come up with breakthrough green technologies instead of ‘dumping’ their
waste in developing nations. We may see a rise in innovation and a subsequent increase in the number
of patent filings from other jurisdictions in the coming years.
The GDP gap hindering green growth
Narrowing the search to the most recent 5 years, we can view the geographic breakdown in figure 2.
Figure 2: Solid Waste Management, World Map Chart
R&D budgets are rising, but the share devoted to the environment remains stagnant. Low patenting
activity in countries like Brazil, South Africa and India, which account for less than 1% of the world’s
environmental technologies, suggests opportunity for inward technology transfer and diffusion. The
lack of priority amongst the top filing countries suggests little transferal of patents have occurred
outside the top filing jurisdictions. This is unsurprising as effective waste management is expensive,
often accounting for 20%-50% of municipal budgets, making it unaffordable for developing countries.
Looking further at the citation network provides an interesting picture. Studying the structure of the
citations network can further our understanding of how innovation knowledge is connected and
passed on between different assignees.
Figure 3: Solid Waste Management, Citation Network
Taking a closer look at these assignees, mainly
global corporations appear to dominate in Solid
Waste Management, indicating their interest in
applied research.
United States Gypsum has 51,893 forward citations,
and Haliburton Co has 49,367 forward citations,
from here the number of forward citations for
the following 8 assignees in the top 10 drastically
decreases. The number of forward citations
is a useful predictor of patent value as a large
number of forward citations suggests industrywide
investment; indicating in this instance
that valuable patents are owned by a select
few assignees and knowledge sharing seems
exclusive within a single jurisdiction – the US.
The role of universities and research centres role
appears negligible, suggesting lack of incentive
for directing innovation towards environmental
objectives. It is essential to narrow the gap
between emerging and developed nations to
increase international technology transfer, as well
as increasing incentive and funding opportunities
for more research centres to be actively involved
in climate change technologies.
Landscape analysis
The 3D landscape map in PatBase Analytics V2
groups patents according to semantically derived
concepts – the height of the hill signifies number
of families relating to the concept in question,
e.g., carbon dioxide.
Figure 4: Solid Waste Management, Landscape map
Studying the landscape in figure 6 shows
there is potential white space in this field. For
example, there could be room for development
in the concepts close to the most popular solid
waste management concepts: ‘Carbon Dioxide’
and ‘Portland cement’, like ‘Waste Container’,
‘Processing Plastic’ or ‘Packaging Technique’.
Recent investment into these areas include
TOMRA, an advanced sensor-based sorting
technology which can optimise sustainability
by increasing the yield of recycled waste and
Vegware, plant-based biodegradable packaging
which emits less carbon and is completely
disposable. Further analysis into these identified
concepts could help investors to expand their
solid waste management exposure, becoming
a market leader and encourage global
sustainability.
Conclusion
Having access to a powerful patent searching and
analysis tool can aid companies in discovering
new opportunities, protecting their patent
portfolio, and monitoring a technology area.
All charts and graphs featured in this article were
created in PatBase Analytics V2, included in all
PatBase subscriptions at no extra cost. Users can
visualise a birds-eye view of market trends and key
competitors, as well as identification of potential
business partners and licensing partners. Visually
appealing reports communicate the results of
a patent analysis clearly to decision makers in a
boardroom environment, even those without
patent know-how!
52 53

Don’t miss
the obvious...
SOUTH CHINA AFRICA
Name: Lee-Ann Picoto
Company name:
Dantofon
Country: South Africa
Position: Co-Founder &
Strategic Operations Manager
...or the obscure
Identify potential partners and licensing opportunities
Monitor market trends and key competitors
Avoid infringement and parallel development
with Minesoft’s web-based patent solutions
analytics V2
Visit www.minesoft.com today to keep your business on track
“In the right hands, data can be powerful,
provide more knowledge than we could
ever imagine and be the catalyst to
greatness and success in every way. In
today’s world, the smallest ideas can
become the greatest innovations. One
idea with a slightly different perspective
on market trends or top players in your
industry could spark a global novelty
that could see your idea go from just
that, an idea, to a global sensation. This
is something that motivates me each
day, seeing people grow not only as
individuals with this knowledge but as
companies, utilising this information to
be nothing short of SUCCESSFUL”.
My name is Lee-Ann Picoto, the Co-Founder
of Dantofon, an IP Consultancy company
with a very uniquely personal touch at the
root of its core. A proud and devoted wife
and mother of two beautiful children. Family
is of great importance to me and keeps me
grounded and gives me purpose. Born and
bred in sunny South Africa, I love the beauty
of this world we live in. I have been fortunate
enough to travel and work abroad, which
truly opened my eyes to truly fascinating
aspects of the diverse cultures of this world.
Travel is something I hope to continue doing
until I’m old and grey (Well old, the grey was
inevitable). Pinterest fanatic and hopeless
romantic. Music and dancing are essential to
my sanity.
I have always had a thirst for knowledge. I
have interests in just about anything that has
depth to it; from philosophy to psychology. I
have studied everything from psychology to
teaching; however, my true passion is seeing
people succeed. I am a true advocate for
women in business and technology. I have
been fortunate enough to speak and work
with so many beautifully intelligent women
globally who have inspired me beyond
words. Thankfully, times have changed,
and women are soaring in any industry
they set their sights on. More and more
women realise that success is not just having
a leadership position but being leaders
who have the sensitivity and patience to
empower others. This is an important role
and one that could make the difference in a
person’s life and career.
My role at Dantofon has taken on a life of its
own. Being able to speak to tech-minded
individuals, IP attorneys, Academia, Startups,
and SME’s means each day is a new
and exciting one. My goal is to assist as
many people or companies as possible
in utilising IP to serve their best interests.
Whether it be utilising patent data, Trade
Secret Management, IP Risk Management,
and Analysis or auditing of these. Also, using
platforms that could assist any of the above.
I look forward to eventually speaking to
more people about the importance of IP and
the great value it has in this ever-changing
and innovating world we live in. I look
forward to empowering and inspiring more
beautiful minds as so many of you do.
I am truly honored and excited to be
representing South Africa in the Innovation
sector of Women’s IP World and look forward
to meeting so many more inspiring women.
54
g l o b a l p a t e n t s o l u t i o n s
55

SOUTH CHINA AFRICA
Innovation IN IT’S MODERN
MEANING IS A NEW IDEA, CREATIVE
THOUGHTS, NEW IMAGINATIONS IN
FORM OF DEVICE OR METHOD.
Research & Development
Dantofon provides patent intelligence services as well as a global search and analytical platform
providing updated, comprehensive, and accurate IP information for global innovators, academia,
R&D staff as well as IP Firms. Dantofon assists corporates in keeping track of the latest technology
development, mitigating patent infringements and innovation, technology concepts, technology cycle
analysis, risks, grasping the R&D trends of competitors and realising the business value of Intellectual
Property.
Dantofon and its partners are the leading IP information providers, focusing on deep integration and
value mining of IP data.
Strategy
By making IP and analysis accessible and usable
for non-IP experts, Dantofon provides IP,
Innovation, R&D and all technical teams with a
new source of information for use during research
and to construct and implement processes and
strategies that compliment your business goals.
Portfolio, Workflow and
Process Management
Organisations are now finally beginning to
integrate their IP strategy with their innovation
and business strategy to create better alignment
and more efficient technologies. To endure the
harmonic integration of protectable IP and the
Written by Lee-Ann Picoto, Co-Founder,
Dantofon
We couldn’t have a more apt description of the
meaning of innovation and the applications
or methodology of it. Even the synonyms
‘alteration’, ‘transformation,’ ‘metamorphosis’
and ‘renovation’ invoke the exact reason we do
what we do. This is what inspires us to reach more
companies, law firms, tech-minded individuals,
and academia. There is nothing more exciting
than seeing what might have seemed like a
small idea turn into a disruptive one that leads to
success. There are certainly ideas that with a bit
of tweaking or a change in perspective could be
the necessary change to bring about that truly
disruptive idea. We want to see our clients realise
their potential and assist with their growth, by
offering the information and consultancy from
ideology stage to getting to the patenting stage,
Where the IP Law geniuses take control.
A bit about us. Dantofon is a Global IP Consultancy
Group that is powered by our global partners
incoPat for our IP analytics and is in collaboration
with Chawton Innovation Services for Trade
Secret Management tools and services including
IP Risk Management and auditing.
Our Founder, Shane Picoto, with 16 years in the
industry, noticed a gap in the market. Techminded
clients, with no interest in IP or had no
time to have to learn how to use a tool to have
the global data at their disposal. In South Africa, it
could take up to 3 years for a patent to be granted!
IP attorneys could have spent hours and hours
doing searches on an idea that could be irrelevant.
Our Global partner, incoPat, had the tool we could
work our magic with, with the know-how of our
Founder, it made for one powerhouse of a team.
“Innovation in its modern meaning is a new idea,
creative thoughts, new imaginations in form of
device or method. Innovation is also often viewed
as the application of better solutions that meet new
requirements, unarticulated needs, or existing
market needs”.
Our Co-Founder, Lee-Ann Picoto, has been predominantly involved in the educating of individuals
or companies wanting to learn more about Trade Secrets, the management of this with the platform
created by her mentor Donal O’Connell (The Hazel Tool). Another platform for IP Risk Management
(the Alder Tool) as well as the auditing of these forms of IP. Lee-Ann has noticed that there is a lack
of knowledge of these forms of IP and the need to protect these, as we can tell by the series of Trade
Secrets stolen over the last few years. Lee-Ann is inspired to empower women in the tech industries as
well as those in academia and IP Law by using these platforms to better serve them on their journey to
success or lend a helping hand. There has, without a doubt, been an increase in the scope of women in
these industries, and this is something that resonates deeply with her.
Trade Secret Return on Investment Calculator Tool
Dantofon prides itself in offering its assistance in a custom way dependent on the clients’ needs. Some
clients prefer to have these tools in house. Others prefer to work on a project to project basis, and
then there are those who would rather use the consultancy side, which provides all they need to move
forward with their requirements.
This allows for the tracing of the technology development trends, seeks and decides the R&D direction,
evaluates S&T achievements, raises the starting point for research projects, grasping innovation
layouts, competitive industrial situations, digs high-value innovative technologies to provide reference
for innovation decision-makers.
Dantofon is able to set up surveillance around any tech space or assignee to receive the latest updates
according to the user’s setting including legal status, patent family, citation information, patentee,
litigation events, re-examination invalidation to help keep track of the latest patent changes and
development of technologies or competitors.
Commercialisation
Dantofon is able to provide insight into newly protected inventions, able to assist with potentially
coming up with new ideas in relation to possible cross-application technologies, tech scouting and
potential leads for collaborations.
There are three main commercialisation options.
- In the Spin-Off scenario, the university keeps most control and owns,
manages, and finances the technology.
- If a start-up is founded, the IP is licensed, while control and funding
come from outside the University.
- Commercialisation in TTO’s alternatively, the IP can be licenced to an
established company.
Whichever scenario Dantofon can assist.
Searches and Analytical Tools
Market and Competitor
Research
Successful market and competitive intelligence
will leverage all the data that is available in
order to provide the most complete picture
upon which to base decisions relating to market
opportunities and company strategies. By
aggregating all the data available in relevant
patents, IP analysis provides an efficient way of
uncovering information relating to these areas,
while often uncovering new facts that could be
vital in assessments or business negotiations.
Dantofon provides the analytical and search tools to support your innovations and strategy as well as
the experience in the search operators, complex query construction, CPC, IPC and truncation to ensure
the results are always relevant.
R&D vision, it is important to encourage a culture of
collaboration and transparency. Cross-functional
partnerships and divisional collaboration should
be encouraged, sharing observations with your
colleagues, and work off the same dataset.
Capture and manage what you find, including
your IP portfolio, competitor’s portfolio, market
intelligence, and general technology searches.
Should any assistance be needed regarding
Process Management, Dantofon can assist.
IP Firms benefits to
having these platforms
IP firms would not only be able to benefit from
the vast array of information, but these would be
added services you could provide to your clients
should they not want to research at ideology
stage. A benefit as far as the tools for Trade secrets
and IP Risk is that you are then able to either
manage the client’s IP portfolio and due diligence
or perhaps offer the auditing as a service. One
thing that we have noticed in South Africa is that
there are more IP Firms, turning to us to create
service offerings within Innovation.
Should you ever have any need for the above
offerings, please do not hesitate to contact Lee-
Ann Picoto dantofon2018@outlook.com or +27
(0) 81 058 7113. We look forward to taking this
journey with you. Moreover, to the ladies in any of
these industries, keep doing what you are doing!
You are all an inspiration to our company and
many ladies around you.
56 57

UNITED CHINA KINGDOM
Name: Lisa Lovell
Specialising In:
Your Upper Hand in Innovation, Strategy and IP Management
Company name:
Brand Enforcement UK LTD
Country: United Kingdom
Position: CEO
Website: www.brandenforcement.co.uk
o
o
o
o
o
o
o
Commercialization
Searches and Analytical tools and Trade Secret
and IP Risk Management tools
IP Strategy
Market and Competitor Research Intelligence
Portfolio, Workflow & Process Management
Innovation and R&D
Technology Transfer
Shane Miguel Picoto
FOUNDER & IP DIRECTOR
Contact:
Tel+27 (0) 81 058 7113
Email: dantofon2018@outlook.com
Cape Town, South Africa
Lee-Ann Picoto
CO-FOUNDER & COO
Since entering the world of Intellectual
Property in 1998, Lisa qualified as a
Solicitor in 2002, Lisa Lovell has over 20
years’ experience in this niche legal field.
She has written extensively on the
subject of intellectual property theft for
various publications including; World
Trademark Review, Trademark World,
Copyright World, Entertainment Law
Review, Home Entertainment Week,
Licensing Today Worldwide, Total
Licensing, Toy News, World Tobacco, and
Global IP Matrix. Lisa was the Editor of
the bi-annual special supplements on
Intellectual Property published in The
Times and a contributing author to the
Handbook of European IP Management,
published by Kogan Page in 2007.
Lisa has spoken at various events including
The EUIPO’s Growing Business with IP
(Milan), the Intellectual Property Crime
Congress (IPCC) (Brussels) and World
Tobacco (Bali, Mexico, and Macau).
Incorporated in March 2003 to exploit
a clear gap in the market, Brand
Enforcement UK Ltd (BEUK) was set up as
an independent specialist legal consultancy
and anti-counterfeiting service provider
with experience in all aspects of both
the criminal and civil enforcement of
intellectual property rights (IPR).
CEO of BEUK, Lisa runs various international
test purchase programmes for many of
the world’s leading brands, spanning
across many industries including fashion,
electronics, printer consumables,
e-cigarettes, medical devices, eyewear, and
fragrances.
Lisa provides her clients with law
enforcement liaison support in the UK,
gathers evidence by conducting test
purchases of physical goods and acts as
a product expert for many of her brand
owner clients.
Once the evidence has been examined
and determined as counterfeit, Lisa then
produces the relevant expert and continuity
witness statements where required. She
then engages with the relevant Trading
Standards (TS) authorities and offers further
support in gathering further physical
evidence and/or intelligence as to the
supply of the counterfeit goods.
With 20 years’ experience in the British
Army, Lisa was a member of the Royal
Military Police and did an operational
tour of Iraq in 2004 (Op Telic). A trained
Military Diver, Lisa participated in Operation
Cockney triangle, a diving expedition in the
Bermuda Triangle. Lisa has also participated
in the British Army Skiing Championships
and has conducted many different exercises
in many different countries, including two
Exchange Programmes in both Indiana and
Michigan in the USA.
Due to the experience gained in her military
career, Lisa also conducts investigations
on counterfeit targets, including not only
the individuals behind it, any Company
information, and details of any addresses
the business is operating from. If Trading
Standards decide to bring a prosecution on
behalf of the client, Lisa supports them with
whatever they need in order to achieve this.
If Trading Standards decide not to bring a
criminal prosecution, we then work with
the brand to establish a different course of
action which may include a private criminal
prosecution or civil enforcement.
Lisa also attends raids on behalf of her
brand owner clients and also training
events where Customs, police and Trading
Standards Officers are provided with
examples of product, both counterfeit and
genuine and are hopefully then enabled to
conduct their own product identification on
the ground.
58
59

Bobbie Carlton, founder of Carlton PR
& Marketing, Innnovation Nights and
Innovation Women, has been called
Boston’s Innovation Den Mother and
the Startup Fairy Godmother. She’s an
award-winning marketing, PR, and social
media professional. Bobbie regularly
speaks on marketing, public speaking,
and women’s issues. Her humorous
approach and fiery “let’s make
something happen” brand is supported
by the real-world results she helps drive:
1400+ new products launched, $3B in
funding, 3 million monthly views, and
1000+ women speaking at conferences
and events.
Currently a “parallel” entrepreneur (instead
of a serial entrepreneur), Bobbie has
spent the last 10 years building her own
businesses as well as supporting client and
community efforts. Previously, in addition
to working with several Boston-area PR
and marketing firms, she headed global
PR at Cognos and PTC, both publicly held
enterprise software companies. In 2006 she
switched gears, joining a startup focused
on supporting self-esteem and positive role
models for preteen girls through a social
network and book series.
In 2008, she started her own company…the
first one.
• Carlton PR & Marketing is a boutique
agency servicing a wide variety
of startups and small companies,
providing support for PR, content
creation, social media marketing, and
marketing programs.
Name: Bobbie Carlton
Company name:
Carlton PR & Marketing. Innovation
Nights, Innovation Women
Country: U.S.A.
Position: Founder
U.S.A.
Website: www.carltonmarketing.com
www.innovationwomen.com
www.innovationnights.com
• Mass Innovation Nights (MIN) is a social
media powered new product showcase
and networking event. MIN has
launched more than 1400 new products
for free. These startups have received
more than $3 billion in collective
funding. When coupled with Bobbie’s
PR work, she figures she’s helped launch
more new products than any other PR
person on earth.
• Innovation Women is an online
“visibility bureau,” helping drive
visibility for entrepreneurial, technical,
and innovative women through
speaking engagements. Bobbie’s goal is
to eradicate “Manels” (all-male panels)
and get 2400 additional women onstage
a month. (This number should get
us to gender-equity on-stage. Currently,
more than 70 percent of all conference
speakers are men.)
In 2010 she was called one of the “ten
Bostonians who have done the most for the
startup community.” She’s also received
numerous professional awards: Marketing
Sherpa Viral Campaign of the Year, several
PRSA Silver Anvils, Mass High Tech Luminary
Award, Boston Business Journal Woman
to Watch, PR News Gamechanger award
and Boston’s “50 on Fire.” See her TEDx talk
for the Innovation Nights and Innovation
Women stories.
“ We provide legal consultancy in all areas
Areas of expertise
of business law”
- Trademarks / Designs / Patents
- Copyrights / Domain names
- IP Portfolio Strategy, Filing, Prosecution & Management
- Enforcement / Unfair Competition
- Litigation / Alternative Dispute Resolution
- Anti-counterfeiting
- Licensing & Consulting
- Commercial and Company
Campoamor, 18
28004 MADRID – SPAIN
Tel.: +34 91 310 63 63
shernandez@santiagomediano.com
Silvia Hernandez
Founding Partner
Acknowledged by WTR 1000
CHAMBERS & PARTNERS - IP STARS
NexLaw Advocates is a law firm licensed to practice
law in the United Republic of Tanzania and Zanzibar
since 2007.
Our IP services include
• Trade and Service Marks (Tanzania and ARIPO),
• Competition Law,
• Patents and Design Rights,
• IP Audit and Due Diligence,
• IP Licensing and Technology Transfer,
• Copyright, Media and Entertainment,
• IP Litigation,
• Domain management services and online brand
protection services.
NexLaw Advocates,
Patents and Trademark Attorneys,
4th Floor, PPF Tower, Ohio Street/Garden Avenue,
P.O.BOX 75578 DAR ES SALAAM, TANZANIA
Tel: +255 22 2135677 | Fax No.: +255 22 2135678
E mail: info@nexlawadvocates.com
Webpage: www.nexlawadvocates.com
pgg®
Propiedad Intelectual / Paula Guerrero Guerrero
Intelectual Property Managing Attorney /
Abogada
MARCAS | DERECHOS DE AUTOR | PROTECCION DE DATOS |
LICENCIAMIENTO | LITIGIO
TRADEMARKS | COPYRIGHTS | DATA PROTECTION | LICENSING
| LITIGATION
Colina de los Acónitos No. 41-202C, Fracc. Bulevares, Naucalpan, Estado
de México, 53140 México (+5255) 2580.3366 (+52155) 5432.6646 |
pgg@pgg.mx | www.pgg.mx
60
61

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Northon's Media PR & Marketing Ltd
Conference & networking seminar
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Make sure to subscribe to The Women's IP World Annual on our website to
keep up to date with our progress regarding our event schedule and location.
For further information on sponsorship, exhibiting & branding opportunities
surrounding this new event please contact us at info@womensipworld.com
or call +44 (0)203-813-0457
www.womensipworld.com
62 63

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