The Women's IP World Annual 2021

Contents
page 04
YOUR MOST
TRUSTED
IP PARTNER
Women’s IP World annual 2021.
Opening letter by the 2020 INTA President Ayala
Deutsch.
page 06
Co-sponsor opening letter
written by Manisha Singh, Managing Partner at
LexOrbis, India.
Law firm profiles, bio’s and article
North, Central America
& The Caribbean
page 09
Dumont, Partner profile & Article -
COVID 19, my personal journey.
Written by Laura Collada, Managing Partner at
Dumont. Mexico.
page 12
Advitam, Partner profile & article -
A Cause Born during the Chaos.
Written by Michele Katz, Founder Partner at Advitam,
LLC, Chicago, USA.
page 15
Caribbean Trademark Services, LLC,
Partner profile & article -
Trademark Practice in the Caribbean Jurisdiction.
Written by Keesha Fleming lake, Managing Attorney at
Caribbean Trademarks, LLC, Anguilla.
page 19
Eproint, Partner profile & article -
Women and law. Experiences and lessons. Written by
Vanessa Abdel-Razak, Partner at Eproint, Haiti.
page 23
Foga Daley - Partner profiles
Dianne Daley, Founding Partner & Nicole Foga,
Managing Partner at Foga Daley - Attorneys-at-Law,
Jamaica.
South America
page 26
Estrategia Juridica, Director & Attorney at Law
profile & article –
Trademark Falsification, a growing problem faced
by Trademark holders. Written by Claudette Vernot,
Director at Estrategia Juridica, Colombia.
Europe
page 29
Gómez-Acebo & Pombo (GA_P), Lawyer/Associate
profile & article –
IP Consideration of augmented and virtual reality.
Written by Isabel Bandín Barreiro, Digital & Innovation
Lawyer/Associate at Gómez-Acebo & Pombo (GA_P),
Spain.
page 32
Cerian Jones IP, Profile –
Dr Cerian Jones, Founder & Director at Cerian Jones IP,
United Kingdom.
page 34
Patpol, Partner profile -
Izabella Dudek-Urbanowicz, Managing director at
Patpol - European and Polish Patent and Trademark
Attorneys, Poland.
Welcome to the second annual edition of the Women’s IP World, 2021.
A few years ago, we had an idea and a vision of what we wanted this publication to be and achieve. The
minute this idea was presented to me, I jumped at the chance to be involved. I love nothing more than being
inspired daily by the women I speak to, and here at Women’s IP World, we are passionate about providing a
platform for women to shine.
Day to day, we speak with many successful men and women who work in the field of IP; however, working on
the Women’s IP World annual always brings something different and something very special. While editing
this publication, I always do so with a warm glow, often having to stop and message the author to tell them
how much their article has moved me.
As women, we are never just the job we do, our roles are varied, and we can wear many hats in one day. Once
again, in this second issue, we have an impressive display of remarkable women who have worked hard, faced
challenges, strived for success, and achieved great things. Our publication is proud to feature women who are
pioneers in their countries, women who have taken courageous steps in their working and personal lives, and
women who empower women by sharing and coming together from all over the globe. This is our vision.
Thank you to all the amazing women who have contributed to this issue, each and every one of you!
Ms. Elvin Hassan - Editor & Head of International liaisons
page 35
www.womensipworld.com
Sigeon IP, Partner & Of Counsel profiles -
Anna Grzelak, Phd, Managing partner and Of Counsel
Małgorzata Cichosz, LLM from Sigeon IP Grzelak &
Partners, Patent Attorneys and Attorneys-at-Law,
Poland.
page 36
Orbis IP & Law, Partner profiles & article –
Two women, one vision! A Woman’s touch made the
difference. Written by, Dilek Zeybel, Managing Partner
& Aylin Şener, Managing Partner, Orbis IP & Law,
Turkey.
page 38
Destek Patent, Profile -
Claudia Kaya Manager & Managing IP Consultant at
Destek Patent, Turkey.
page 39
INTERPATENT, Profiles & Article -
When IP Consultants become IT Consultants: the
struggling and never-ending search for online
evidence. Written by Nicole Gorlier, Manuela Bruscolini,
Maria Cristina Goicoechea Margalef and Simona
Mantovani at INTERPATENT, Italy.
page 44
Troller Hitz Troller, Partner profile -
Ursula In-Albon, Partner at Troller Hitz Troller,
Switzerland.
page 46
Anchor IP, Founder profile & article -
The World of IP & Why I Love My Job.
Written by Diana Versteeg, Founder of Anchor IP, the
Netherlands.
IP Industry business services
profiles & articles.
page 49
Brand Enforcement UK, CEO Profile –
Lisa Lovell, CEO of Brand Enforcement UK, LTD,
United Kingdom.
page 50
Patent Seekers, Article -
Championing Gender Diversity for Innovation
Written by Clare Gibson, Patent Analysis at Patent
Seekers, United Kingdom.
Africa
page 55
BMatanga, Article & Head of Practice & Lead IP
Counsel profile -
Guardians of the Knowledge Economy. Written by
Brenda Matanga, Principal at BMatanga Intellectual
Property Services, Zimbabwe.
page 58
Jackson, Etti & Edu, Partner profile -
Uwa Ohiku, Partner & Head of IP Practice at Jackson, Etti
& Edu, Nigeria.
page 59
Stillwaters Law Firm, Associate profile & article –
Commercialisation of IP in West Africa, Challenges,
and the recommendations geared towards
encouraging innovation. Written by Nneoma
Emeruem Azuike, Associate at Stillwaters, Nigeria.
Asia
page 64
Julius & Creasy, Article – Protection of well-known
trademarks in Sri Lanka.
Written by Anomi Wanigasekera, Partner at Julius &
Creasy, Sri Lanka.
page 65
LexOrbis, Partner profiles & article -
Soap Wars: Dabur Gets Interim Relief. Written by
Manisha Singh, Managing Partner & Amaya Singh,
Partner at LexOrbis, India.
page 68
LS Davar & Co, Managing Partner profile -
Dr Joshita Davar Khemani, Managing Partner at LS
Davar & Co, India.
Carlos Northon
Founder & CEO Northon’s Media PR & Marketing Ltd
Publisher of The Global IP Matrix & Women’s IP World
carlos@northonsprmarketing.com
Elvin Hassan
Editor for The Global IP Matrix & Women’s IP World
Head of International liaisons for Women’s IP World
elvin@womensipworld.com
Craig Barber
Head of Design for The Global IP Matrix &
Women’s IP World
info@northonsprmarketing.com
03

One of my priorities as the 2020
INTA President has been supporting
the advancement of women in
the intellectual property (IP) field.
Although everyone’s focus this
year has appropriately been on
the COVID-19 pandemic, we must
not lose sight of how critical it is
to promote gender diversity and
facilitate the advancement of
women in all areas of the workforce,
including IP.
In fact, this is more important now than ever.
COVID-19 has disproportionately affected
women. For example, women make up 70
percent of the health workforce globally.
Not only are women more likely to be
frontline healthcare workers, they are also
often on the frontlines at home, caring for
their own families. The 2020 Women in the
Workplace report, published by McKinsey
& Company and leanin.org in September,
found that, while no one is experiencing
business as usual during the pandemic,
women—especially mothers, senior-level
women, and African American women—
have faced distinct challenges. According to
the report, one in four women is considering
downshifting their careers or leaving the
workforce due to COVID-19. The gains
made for women’s advancement in the
workplace in recent years are fragile and
at risk of being reversed if society does not
Letter from INTA
AYALA DEUTSCH - 2020 INTA PRESIDENT
safeguard this progress. Recovery from the
COVID-19 crisis must include addressing the
remaining systemic inequalities that have
been highlighted by the pandemic. We must
continue to move forward.
Equality for women in the workplace and in
the IP field (given that this is the area where
I have been practicing law for decades)
has been an issue close to my heart for my
entire career. Almost 30 years ago, I helped
establish the women’s network at the law
firm where I began my legal career. I served
several terms on the New York City Bar
Association’s Committee for Women in the
Profession. And, currently, I am an executive
champion of the NBA Women’s Network.
More recently, in my role as INTA President,
I joined the Association in announcing
The Women’s LeadershIP Initiative on
International Women’s Day this past March.
We created this INTA initiative to foster the
development of strong leadership skills
for women in the IP field and to empower
them to advance their careers to the next
level. This initiative is aligned with the
Association’s long-term commitment to
diversity and inclusion and other aspects of
corporate social responsibility.
We need to support women entering the
IP industry, as well as women who already
have dedicated themselves to the field, to
help them advance into much-deserved
leadership roles and enjoy fulfilling career
paths. In doing so, we can unlock their
talent so that they can contribute to and
enrich our industry to their fullest potential.
This means awarding opportunities on
merit throughout the IP sector—from
corporations to law firms, from government
agencies to the court system. Although we
have made progress, there is always room to
increase opportunities for women generally
and for women in IP, particularly.
To address gender inequality in the IP field,
we must approach this matter with the
right perspective. We need to think about
what diversity and inclusion mean in a
broader sense and what we have to gain by
embracing diversity and inclusion in our field.
Diversity in its truest meaning is not only
about diversity of gender or diversity of race
or diversity of ethnicity; it’s about diversity
of thought and diversity of experience and
diversity of approach. The more diversity
you bring to the table—people who think
about things differently, tackle things
differently, have a different perspective on
resolving an issue—the better the work will
be because you are gathering the best of a
lot of different ideas instead of focusing on
only one. By embracing gender diversity,
we foster diversity generally and create
an inclusive environment where different
perspectives, approaches, and experiences
are welcome.
I have been fortunate in having a fulfilling
career in IP. Over the years, I have had the
opportunity to engage in interesting and
meaningful work, lead projects and teams,
expand my portfolio, and continue growing
in my profession. While all of this has
resulted in success, the path has not been
without challenges, and I remain mindful of
the challenges that women still confront in
the workplace.
Although we may never truly understand
the challenges of others, empathy can be
a powerful tool in creating a truly inclusive
workplace—and society. The 2019 Women in
the Workplace report, published by McKinsey
& Company and leanin.org, features survey
data from more than 68,000 workers across
Canada and the United States. In stark
contrast, one finding presents how men and
women view the challenges facing women
in the workplace. Twenty-one percent of
men surveyed (the largest portion) said the
biggest challenge in getting equal numbers
of women into management is that there are
too few qualified women in the ranks. On
the other hand, 40 percent of women said
the biggest challenge in this regard is that
they are judged by different standards. This
is reflective of a gap in how men and women
perceive gender diversity in the workplace.
The challenges women face throughout the
workforce are wide-ranging and complex.
As women, we are not only judged by
different standards; we also work under
greater scrutiny—even down to the clothes
we wear!
In 2014, after noticing how his female onscreen
colleagues on an Australian morning
TV show regularly received comments on
their appearance, a male television anchor
decided to wear the same suit on air every
day for a year to see if anyone would notice.
No one did. In revealing his experiment,
he said, “I’m judged on my interviews, my
appalling sense of humor, on how I do my
job, basically. Women are judged much more
harshly and keenly for what they do, what
they say, and what they wear.” Ironically,
his co-anchor was later the subject of a
newspaper story that pointed out how she
wore the same maroon blouse for a second
time on-air, having worn it four months
previously.
That same year, online magazine Slate ran
an article titled, “Female Lawyers Who
Dress Too ‘Sexy’ Are Apparently a ‘Huge
Problem’ in the Courtroom.” The article cites
various examples of legal institutions (such
as law schools and bar associations) and
individual judges grappling with the “issue”
of what constitutes an appropriate female
dress code. The article also describes how,
despite the pantsuit now being considered
acceptable courtroom attire—that was not
the case when I began my career—female
lawyers still face the challenge of having to
find an outfit that strikes the right balance
of being sufficiently feminine but still
conveying authority and professionalism,
in order to meet the expectations of male
judges, clients, and colleagues.
While I was still working at a law firm, I
remember working with a senior partner the
night before an important court hearing to
prepare our case. After hours of working on
exhibits and outlines of oral argument, just
as we were preparing to go home and try
and get some sleep, the partner said, “Ayala,
do you have anything beige? I think it would
be best if you wear something beige to court
tomorrow.” I panicked. I didn’t own anything
beige! After a sleepless night, I showed up
in court in a conservative olive-colored suit;
we won the motion, and all was well. Still, it
struck me how, following all my substantive
work on the case, the partner’s concern
turned to the colour of my suit.
For women litigators, courtroom “presence”
is incredibly important and challenging. I
recall an instance early in my career: I was
www.womensipworld.com
in court with a cold and sore throat, and
my voice was raspy and hoarse as a result.
When my case was called, I stood up and
responded, raspy voice and all, but before I
got very far, the judge interjected to say in
front of the full courtroom, “If you’re nervous
dear, my clerk can get you a glass of water.”
I was mortified, but I should not have been
surprised. This was more than 25 years ago,
and at the time, such a comment was not
considered patronising or even unusual.
These challenges are not new, and they still
exist. Recently, I was chairing an important
meeting with more than a dozen people,
and I was the only woman in the room.
Just as I called the meeting to order, one
of the senior clients went on and on about
how “pretty” my outfit was, how “nice” I
looked, and how “colourful” my scarf was.
Of course, those all are lovely compliments,
but in that setting, they served to undercut
my authority, regardless of whether that
was what the client intended. Those are
comments that he would never have made
about a man.
As women, we continue to navigate
numerous challenges as we seek to advance
in our careers. Helping others change their
perceptions and become more empathic
may be our biggest challenge and, ultimately,
one of our most important objectives. At the
same time, I strongly believe that we must
remain true to ourselves—our authentic
selves—rather than try to fit into a false
construct created by others.
INTA is well-positioned to lead these efforts
within the IP field. Since 2000, ten INTA
presidents, including me, have been women.
This year, five of the six Officers of the Board
of Directors, 15 of the 30 members of the
Board, and 31 of the 70 committee chairs
and vice chairs are women. The Women’s
LeadershIP Initiative will continue beyond
this year as a permanent program to provide
women in the IP community with the skills
to develop as leaders and champion their
professional growth.
As part of this initiative, we held a series of
virtual workshops with more than 130 female
INTA members from Asia, Europe, North
American, and Latin America Discussions
focused on some of the core challenges
to be addressed: (1) representation in the
workplace, (2) career advancement, and (3)
work-life integration.
We held three additional workshops
during INTA’s Annual Meeting & Leadership
Meeting in November. These workshops
were open to women and men and were
held at different times to accommodate
all time zones. More than 450 meeting
registrants participated in these workshops.
Their popularity underscores the need for
and the importance of the initiative.
Also, as part of the initiative, INTA is
developing content on an evolving basis,
highlighting the talent of women in IP and
promoting the tools and skills needed
for their professional growth. Notably, in
a series of INTA’s podcast Brand & New,
called Women’s Empowerment in Intellectual
Property, women share their experiences
and discuss diversity and inclusion in the IP
world.
INTA will soon publish a report covering
the work of The Women’s LeadershIP
Initiative in its inaugural year. The report
contains key findings on the current state
of play, recommendations to advance
women’s leadership in IP, and best practices
on diversity and inclusion, based on the
feedback from female INTA members
around the world. The report furthers the
agenda of The Women’s LeadershIP Initiative
in building a long-term sustained program
beyond this year that will actively champion
women as leaders in the IP field.
Why now? For INTA and its global
community of IP professionals, the timing
is perfect. We have begun working on our
next strategic plan for 2022–2025, and
diversity and inclusion are very much part
of the discussion we’re having about the
Association’s next four-year plan. The work
undertaken this year and beyond through
The Women’s LeadershIP Initiative will go
far in informing this strategy. Our approach
is working: we are gathering data, collecting
feedback, gaining an understanding of the
various challenges women face around the
world, and compiling recommendations
to inform how the Association should
approach diversity and inclusion for women
and other groups.
As we move this initiative forward, we
must focus on real opportunities that lead
to success and advancement. It can be
easy to focus only on the numbers—such
as the number of women represented in
a particular workforce or industry. And
that representation is important. But
to fully realise the value that women
can deliver and the success they can
achieve, it isn’t enough for women to
be counted as part of a demographic.
Women must be offered opportunities
for work—opportunities for success that
are tangible and substantive. That is my
call to action to the global IP community:
Make sure women are not just in the
room, make sure they have a seat at the
table, including equal opportunities
for important assignments, visibility to
senior leadership, and responsibility for
managing people and budgets.
My call to action for women IP
practitioners: Be your authentic self
and find comfort and strength in your
authenticity. Our authenticity translates
into confidence, into relatability, and,
ultimately, into success.
Ayala Deutsch is the 2020 INTA President and
Executive Vice President & Deputy General
Counsel at NBA Properties, Inc.
04 05

Co-sponsor Letter
WRITTEN BY MANISHA SINGH,
MANAGING PARTNER AT LEXORBIS,
INDIA
Intellectual property law acts as
an encouragement for innovators
to reach their potential and birth
ideas that may change the world.
The possibilities are endless. Yet, for
centuries, invention and creation in
the sphere of art, culture, literature,
science & technology have been
male-dominated. We find fewer
accounts of female visionaries
on record, as compared to their
male counterparts, who have
made remarkable contributions
to the world we live in. Some
ideas went unnoticed, some were
stolen, and some were outrightly
denied for those ideas belonged
to a woman. Without a shadow
of a doubt, women have been
under-represented in the world
of IP, and their potential has been
underutilised.
Creativity is not gender-specific. The fact
that gender disparity exists in innovation is
worrisome, and the numbers are alarming.
According to a report by the United States
Patent and Trademark Office (USPTO), “in
the last decade, all-female invented patents
constituted only about 4% of issued patents.”
As per the UK’s Intellectual Property Office,
women inventors account for 13% of patent
applications made globally. In India, women
account for only 14% of the total individuals
engaged in entrepreneurship.
It would be unjust to ignore the fact that
these figures show progress, but we have a
long way to go before these numbers reach
a satisfactory level.
The world today realises the potential of
women; their courage and genius cannot
stay hidden in the dark. We must bring
women creators to the forefront and set an
example for those seeking inspiration. Now
more than ever, we need more female role
models, and we need to know their stories.
We need platforms that discuss the triumphs
of women. We need to appreciate them a
little louder, for we must rewrite history. It
is time to challenge the outdated practices
and create a legacy of women in IP and
innovation to aspire.
Women’s IP World is one such step in the
right direction, and LexOrbis is proud to cosponsor
the second issue of the magazine.
With more editions in the future, the
publication will act as a handy reference and
evidence to show how women are impacting
innovation, creation, and entrepreneurship.
The goal is not to deny men of their due
credit but to bring women at par and create
an inclusive environment where there is a
shared contribution in enhancing global
creative assets.
The passive patriarchal tone has been deeply
entrenched in our society. Workplaces
must make equal efforts in promoting
gender equality. LexOrbis boasts of having
employed 70% of women in its workforce.
The firm’s office in Mumbai has an all-female
staff. It is safe to say that the firm is a fine
example of the wonders women can do
when provided with the right opportunity.
When I started the law firm in the late 90s,
India was still new to the world of intellectual
property. It took determination to build
an inclusive culture. There was a dearth of
progressive opportunities for women in IP,
which enabled me to create such policies
where everyone gets to explore their full
potential, irrespective of their gender. The
women at the firm can avail themselves of
many benefits like work from home facility,
six months of maternity leave, flexible
working hours, and a safe environment. This
aims to provide them with a healthy worklife
balance- most of which are somewhat
amiss from the Indian legal industry, except
under the current pandemic and consequent
lockdowns.
We need to discourage gender-based
preconceived notions. Organisations
should hold regular gender sensitisation
and awareness activities and communicate
progressive policies to employees. Gender
must not overshadow the caliber of a
person; instead, the capabilities must
be determined through skills and talent.
Participation of women engineers, scientists,
music composers, brand owners, writers, et
al. should be encouraged in the creation of
IP assets.
Through a collective effort, we must
understand the deep-rooted issues that
cause gender disparity and work towards
eradicating those to bridge the gap and undo
the prejudices. Education and awareness
play an important role. Women’s IP World
has done a remarkable job in promoting
the often under-credited community of
inventors, whose contributions have been
game-changing. LexOrbis supports the
vision to bring together women in IP and
innovation from all over the world and
dedicate a platform for them to showcase
their expertise, experience, struggles, and
achievements.
IP Law firm and Business
PROFILES
&
ARTICLES
Sponsored by
www.womensipworld.com
06 07

MEXICO CHINA
North, Central America
& Caribbean
Sponsored by
With more than 30 years of experience
in the IP field and as the Managing
Partner of the firm since 2008, Laura is
a dedicated strategist and has acted on
several milestone cases. Laura leads most
of the firm’s large and complex cases.
Furthermore, Laura has a high profile,
both locally and internationally. She is
regularly invited to speak for MARQUES,
UIA, ASIPI, FICPI, ABPI, and INTA and is a
renowned teacher at several Law Schools.
She is very active in promoting the Madrid
Protocol and has lectured on the topic
domestically and abroad. Laura’s practice
covers the complete lifecycle of IP rights.
However, since the recent dramatic changes
to the Mexican legal framework, she has
been increasingly dedicated to promoting
the MADRID system among clients and
the new opposition system that entered
into force. She also continues to design
strategies for clients as well as litigating.
Laura is one of the only two women in
Mexico who is the Managing Partner of an
IP law firm and a three-time recipient of the
Best IP Lawyers in Latin America Award of
Euromoney’s Americas Women in Business
Law. She has written about IP for national
newspapers and international IP magazines:
Women’s IP World Magazine 2019-2020
-Why is everybody talking about Cultural
misappropriation?
Expert Guides Women in Business Law 2019
- Cultural misappropriation, where Mexico
stands.
She was invited to be part of the expert team
to work on the wording of the amendments
to the Mexican Industry Property Law. She
was asked to write, among all the experts,
the initiative of law and the exposition of
reasons. This project of amendments has
been introduced and presented to the
Mexican House of Representatives and
turned into law.
Laura is a Council Member of MARQUES and
project leader in the International Trademark
Team. She is the Spanish Deputy Editor of
UIA’s Juriste magazine. Laura also leads
the Madrid Protocol Committee at ASIPI.
She is Co-Chair of the Standing Committee
on Geographical Indications in AIPPI, a
Name: Laura Collada
Law Firm Name: Dumont
Country: Mexico
member of the Famous and Well-Known
Marks Committee of INTA, and a member
of national and international professional
associations, including AIPF (a member
of the Board), ASIPI (Special Commissions
Coordinator of the Madrid Protocol), AMPPI
Mexican Chapter of AIPPI (Past Chair of the
Women’s Committee), AIPLA, ECTA, and
PTMG.
Laura advocates for women’s equality by
seeking out female candidates and offering
top positions to female lawyers. She is
involved in several associations (AIPLA, UIA),
creating awareness by speaking out about
“glass-ceiling” issues at events, including the
AIPLA Women in IP event that took place at
Dumont’s office in Mexico City three years in
a row (2016, 2017 and 2018).
Dumont, led by Ms. Collada, proposed to
AMPPI (AIPPI Mexican Chapter) to create a
women’s committee to empower IP women
lawyers, to research the sociological ground
why there are so few positions for women
in executive positions as well as to create
awareness among the firms on our field (IP).
The creation of the committee is a reality
today. It was established, March 2017, and
Ms. Collada was the Chair of the Women’s
Committee for two years (2017-2019).
She is ranked in CHAMBERS LATIN AMERICA
and CHAMBERS GLOBAL as a leading
lawyer; THE LEGAL 500 LATIN AMERICA; as
a recommended lawyer; IP STARS as Patent
Star, Trademarks Star, and Top 250 Women
in IP; WORLD TRADEMARK REVIEW 1000, as
a leading lawyer; EXPERTS GUIDE, as Patents
and Trademarks leading lawyer. Laura is
also recognised as one of WIPR’s Influential
Women in IP.
As one of the two only female Managing
Partners of an IP firm in Mexico, Ms. Collada
acts as an icon to women who wish to
advance their careers in this field. The
women working at Dumont often choose to
stay long-term to improve their knowledge
and expertise here since they are met with
far less bias than is often found at other firms
in Mexico.
This has made Dumont known as a
firm in which women are empowered,
acknowledged, and groomed as lawyers.
Position: Managing Partner
Website: www.dumont.mx
08
09

COVID 19
It started in mid-February. Airplane
ticket bought. Hotel reservations,
checked. Plans with friends…
organising them. London calling!
I was going to attend a couple
of conferences. I have my little
international community, friends
that have become family. We attend
the same conferences and always
make room for our time together. We
come from all corners of the world. We
all were hearing, almost daily, about
this new illness. News from Italy was
unbelievable, and the doubts began.
This little international community
comprises empowered women, IP lawyers,
all well recognised, and we have become
family. It is not a conference-by-conference
friendship. Regardless of distance and time
zones, we are always there for each other; we
laugh together, cry together, support each
other, and we care for each other.
While discussing our London plans,
changing hotels to stick together, making
MEXICO CHINA
my personal journey
Written by Laura Collada, Managing Partner at Dumont. Mexico
www.dumont.mx
A year that never started
has come to an end
No, I was not a believer. I thought it was only
another big, fat, ugly flu-like H1N1 and that existing
treatments would be effective against it.
restaurant and theatre reservations, one
called to cancel. Another one who had
recently been in Milan told us what she
had experienced there. I teased them, I
bullied them, told them not to be afraid,
that it was unlikely that we would catch it,
we were healthy women who are used to
travel. I remember hearing them and not
believing that they were so afraid. I did
not understand my sisters, my partners in
crime. On the other hand, I was invited as
a speaker at one of these conferences and
could not cancel; if I did, I was afraid of
being considered unprofessional. No way.
I carried on with all my plans even though
all my close friends had already cancelled.
I truly believed they were overreacting. It
is a big, fat flu… nothing more. A couple
of weeks later, along with different friends
and co-speakers, we started discussing
the possibility of cancelling our trip.
Conferences were cancelled, travelling was
not on the table anymore. At that moment, I
was still full of doubts, I sometimes thought
that I should be concerned, but other times
I felt that it was an exaggeration. They knew
better than me.
Before mid-March, things started to get
a bit crazy in Mexico. We learned that
people got sick abroad and returned to
the country, and they were contagious.
Official information was not clear and was
scarce. One of my colleagues asked me
while having a coffee break together, “don’t
you think that we should start working on
a plan for the pandemic?” I did not know
what to answer; it caught me off guard. That
“exaggeration” had become our reality; not
wholly convinced, I asked him to put a plan
together, just in case.
The news was frightening. I started learning
about cases in my social circle. People were
fighting for their lives at the hospital. We
decided that even without precise and
efficient official information, we would
send all our staff home and have them work
remotely. In my many years as Managing
Partner of my firm, I had only been through a
similar situation once, H1N1 in 2009, we were
at INTA in Seattle, and the only thing that I
clearly remember is that not many wanted
to meet with Mexicans back then. We went
through a soft lockdown for a couple of
weeks, and that was it. Yes, we wore masks,
used up bottles of antibacterial gel, and
sprayed Lysol everywhere, but it was gone
almost as quickly as it had appeared; at least
that is the way I remember it. So that was the
moment it hit me: COVID-19 was in our lives.
At the firm, we were already using all
technological and digital tools available
and required for our practice; however,
the only ones using those that allowed
for remote working were those who
frequently travelled. We needed to get
more licenses. OK, we did. But it was not
that easy; everyone was going home, and
you had to look at the different realities
within our whole staff. Don’t get me wrong;
we live in Mexico, a country of contrasts.
Did every person working for the firm
own an efficient computer supporting the
software? Does everybody have a highspeed
internet connection that will allow
adequate connectivity? So, we had to get
new computers for some of our personnel.
And what about confidentiality? How are
we going to measure productivity? How will
we supervise, teach, mentor, and very long
etcetera? We were fully operational in less
than a week: everybody was working from
home. ALL of us. No time for introspection.
No time for reflection. We had to take care of
our staff, especially those who live far away
and travel on public transportation. Once
again, official information was not clear
enough; It was like an official denial. Nothing
will happen. In a month, we will return
to normality. That was our government’s
motto.
The daily experience was hectic. In a
week, the country went from “nothing is
happening” to full lockdown. By the end of
March, everything was closed, E V E R Y T H I
N G. This means, for you to understand me,
that the Patent and Trademark Office (PTO)
was closed, including almost all judicial
and administrative authorities. Fully closed.
That meant no filings. I panicked! I am the
Managing Partner of an Intellectual Property
firm. Our PTO went into lockdown, shutting
down all technological and digital tools.
How do you keep an office up and running
if you cannot file any legal documents?
For three weeks, it was a nightmare. We
received almost the same workload daily.
But our filing possibilities were entirely
stopped. The PTO slowly started reopening
some of the options to file electronically
until it softly reopened physically by mid-
July. We had to be creative, we had to be
resourceful, we had to be resilient, and
‘challenge’ was the name of the game.
I kept going on for months without
reflecting on anything else but the firm. IP
is an area where personal touch, physical
presence, and networking are a must. We
rely on many conferences to meet with our
clients, network, try to get new clients, and
so on. Webinars and zooms became our
daily activity, spending many more hours in
front of our computers since apart from the
workload, we had all these “new tools” to
get the job done and socialise. Until today,
it wears me out. I have not been able to
enjoy this new technology. I miss physical
presence.
Several months later, I let myself reflect on
everything we are living. Once I thought
that the new normal was completely
efficient at the office, I thought about how
my feelings and thoughts and emotions
had changed regarding COVID-19. I went
from complete disbelief to being afraid of
catching it (almost cabin fever) to adapt to
the new normality. This emotional journey
came through grief and pain.
I’ve lost close relatives to COVID-19. I have
friends that have had lengthy stays at
hospitals and miraculously survived. I have
friends who are dealing with the aftermath
of being sick and suffering effects for a
lifetime due to the illness; companies that
went broke, divorces and separations, and
even suicide. Depression, anger, frustration,
fear.
Watching TV series’ is something that we
have all been doing. Many months ago, I
decided to watch The Tudors for a second
time, and within a couple of chapters, it
portrays what the ‘English Sweat’ was at
the time. People got sick for apparently
no reason, and some days later, they died.
Food was delivered to the door, and people
went into lockdown. Instead of enjoying the
series (which I love), I felt desolation. As a
species, we are as vulnerable and fragile as
we were five hundred years ago against this
new virus.
I think all of us want our lives back. We want
to travel, meet friends, go shopping, go to
the office, etc. We are social beings, which
has been very hard for all of us. It is a year
in which we have been taught to appreciate
everything we have and not take anything
for granted. It has been a year of challenge
and resilience. It has been a year of concern
and caring for the people you love. I stop
and think about the effects besides the
economic ones. What will happen to the
children? Toddlers who haven’t socialised
out of their families, kids who play without
their friends, people who have felt lonely
or depressed, teenagers and young people
who can’t go out partying, elders who feel
lonely.
I understand that the COVID-19 experience
depends pretty much on in which part of
the world you are, how your government
has dealt with the pandemic, health
systems, etc., but 2020 is a year that we will
hardly forget.
However, not everything is terrible. My
journey through COVID-19 has been a
roller coaster and has made me stronger,
as I think many of us have also become
stronger and resilient. 2020 was a challenge
in every single aspect of us being humans.
This illness brought all of us back to the
basics. It showed us how many things we
take for granted and how many things are
superfluous, and we do not need them. It
made us more empathic. It forced us to be
more disciplined. It made us more open to
change and to adapt, but, above all, I think
that, in a way, it returned to us a part of our
humanity. I believe that we now care more
for our neighbours and our community. We
are worried and concerned about our loved
ones. We want them healthy. We want them
happy and safe.
This illness will change the world forever,
much more than any other event, more
than 9/11. However, I’m willing to embrace
the “new normal”, whatever that means,
because I truly believe that we are working,
all of us, to fight this and we will succeed
and prevail. Beating it not only depends on
innovation and technology. The vaccine, its
transportation, distribution, and vaccination
will help obviously.
However, ultimately, it depends
on all of us, as a species, to keep
our loved ones safe and healthy
and take all measures to avoid
spreading it to help heal the
world. It is our community, our
world. The only one that we
have. The bright thing is that we
returned to the basics: we care for
each other.
10 11

U.S.A.
U.S.A.
Learn more at www.AdvitamIP.com
Name: Michele S. Katz
Law Firm Name: Advitam IP, LLC
Country: U.S.A.
CKERS. COUNTERFEITERS. Position: Founding Partner SQUATTERS.
Website: www.advitamip.com
n too much of daily professional life is filled with the stress of IP portfolio
gement, many companies and entrepreneurs turn to Michele S. Katz.
M. FOCUSED. THOROUGH. Michele provides a calming approach to
ging IP assets. With nearly two decades of experience, Michele conducts
mark searches, prepares opinions, and monitors trademarks Michele Katz, to confirm the founder of the
her clients’ intellectual property rights are used properly intellectual and effectively. property law firm Advitam
manages copyright registration portfolios in addition IP, to LLC, familiarizing has provided U.S. powerful expertise
oms with client designs in an effort to stop counterfeit in client goods counselling, at U.S. strategic analysis,
licensing, prosecution, and litigation in
ers. In the area of patents, Michele litigates complex patent litigation
all areas of intellectual property (IP) law
ers including such varied products as textiles, hard for disk 20+ drives, years. Her airbag diverse skill set and
rs and interface transfer technology. She also manages drive patent to deliver portfolios results applies equally
sure U.S. and foreign patent protection for clients. to obtaining trademark and copyright
registrations and issued patents, as it
NT RESULTS have earned Michele recognition does by in Super obtaining Lawyers favourable outcomes
azine, Marquis Who’s Who in America, and Illinois Super in state Lawyers. and federal She is court and before
ternational Advisory Experts Award Winner, was nominated the Trademark to IAM Trial Strategy and Appeal Board
– The World’s Leading IP Strategists, selected as a Leading
(TTAB), US
Lawyer,
Customs,
and
and the US Court
of Appeals for the Federal Circuit. As
ded in the Top 100 Alumni We Love by The Hebrew University.
a certified mediator, Michele has also
brought parties to creative solutions
in the calming influence of effective IP portfolio
for their management.
disputes. Her firm was recently
recognised in Acquisition International
ele is a founding partner of Advitam IP in Chicago and Magazine is passionate for Most about Innovative IP Law
g back in a meaningful and measurable way. Learn more Firm in at Illinois AdvitamIP.com for 2020.
She is most passionate about giving back
in a meaningful and measurable way. In
collaboration with her family, her firm
started a scholarship fund in the name of
her beloved father, an icon in the IP field,
and annually funds a master’s scholarship
in the innovative sciences at The Hebrew
University (Israel). In the same vein, Michele
DEMARKS | COPYRIGHTS | TRADE SECRETS | DOMAIN NAMES | LITIGATION
created an on-line program that mentors law
USTOMS / ANTI-COUNTERFEITING | LICENSING ALTERNATIVE DISPUTE
students and new lawyers all over the world
RESOLUTION | PORTFOLIO MANAGEMENT ADVITAMIP.COM
in all 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.
Michele is a big believer that business
owners make better business decisions
when they understand the fundamentals
of IP law. Hence, she has spoken to the
start-up community at 2112 and the Illinois
Hispanic Chamber of Commerce, as well as
to the well-established business owners of
the National Association of Women Business
Owners. Getting to them while they’re
young though is also critical, so since 2015,
Michele has served as the expert on IP law for
the Young Entrepreneurs Academy (YEA!),
a transformative after school programme
geared to 12-17-year-old girls and teaches
them how to select, research, vet, develop
and market a business.
As far as recent accolades go, Michele
was included in IAM Strategy 300 – The
World’s Leading IP Strategists in 2019 and
2020, selected as the only US attorney
to be featured in the inaugural issue of
the Women’s IP World annual magazine,
recognised as an International Advisory
Experts Award Winner, selected as a Leading
Lawyer, recognised by Marquis Who’s Who
in America, the standard for reliable and
comprehensive data for today’s leaders,
included in the Top 100 Alumni We Love
from her alma mater, The Hebrew University
and voted into Illinois Super Lawyers.
Michele has passions outside of the IP
world as well. She enjoys spending time
with family, including her four children,
travelling internationally (pre-COVID19),
refining her foreign language skills, getting
her heart rate up with outdoor activities,
and relaxing with wine and whiskey tastings.
Every summer (except summer 2020), she
spends a week volunteering at La Semana, a
week-long culture day-camp for children in
elementary through high school who were
adopted from Latin America and their family
members. Fostering cultural understanding
has always been an integral part of Michele’s
personal life and Advitam IP’s business
practice.
A Cause Born
during the Chaos
Written by Michele Katz, Founder Partner at Advitam, LLC, Chicago, USA
www.advitamip.com
“Why are we here if it ’s not to help others?”
While this quote does not originate with my father, I
attribute it to him anyway because it is his voice I hear
when I repeat it. And as lawyers, that’s what we do. We help
people. In 2020, I decided to reach beyond my profession,
way beyond and started a foundation called Plus One.
But let’s back up. We’re an
adoptive family. That means
I have adopted children—
two of the four of them, both
born in Bogota, Colombia.
My eldest was adopted as an
infant, and my youngest was
adopted in December 2019,
right after her 8th birthday.
As a side note, I am still
grateful that her adoption
was completed before the
pandemic.
I walked into my daughter’s orphanage
with a bag of lollipops, not the first
time. At this point, I’ve become a
known entity. The beautiful children
stop what they are doing and come
running when they see me. And as
they approach with their smiling faces,
I wonder how can so many children
not have a forever home. It just did
not make sense. There are plenty of
people building families. There was
clearly a gap here. This was probably
when the idea for Plus One originated,
but I did not know it yet.
After settling in back home (Chicago),
several people told me they were
moved by our story and said they had
contemplated adoption but had no
idea where to start and therefore never
did. Ah ha, the reason for the gap.
Perhaps there was an easy fix. What
if, through education, I could increase
the awareness of the how and connect
wanting parents with resources so
they could get past the mere thought
of adoption to starting the process.
That got me thinking about why I find
adoption so important. The world can
be a tough place. Just think about the
challenges we have faced during the
pandemic. Have we ever clung to our
loved ones tighter? And I do not mean
physically necessarily. We have found
new ways of communicating, working,
and connecting. We understand more
now than ever how human connection
is so important for our well-being.
Scroll your LinkedIn, Instagram, and
Facebook feeds, and you’re bound to
see the signature screenshots of zoom
gatherings posted for holidays and
business meetings.
TRADEMARKS | PATENTS | COPYR
DOMAIN NAMES | LITIGATION | CUS
MicheleKatz_WIPW_ad_FN.indd 1
So, imagine a child, for whatever the
circumstance, has no loved ones.
Children are set up for success when
raised in a loving home. It provides
trust and security. Without that, they
may never learn healthy attachment.
Why is that important? Without it, we
do not relate to loved ones. It is how
we relate to the world around us.
We would not know how to display
affection appropriately. We might feel
abandoned when our partner goes
out with friends or wants to spend
some time alone. We learn attachment
without even knowing it in childhood.
And healthy attachment is learned, so
without this education, the negative
effects can be quite profound when
these children become adults.
For those who want kids, adopting a
child is a priority, not the last report.
It should be considered as a viable
avenue like any other in their family
planning. And why not make the world
a better place as a result. The world
has been hit hard recently. So, besides
my day to day in the IP world, this is
how I hope to help others, for why else
am I here? How about you?
12 13

A CALMING INFLUENCE IN A
CHAOTIC IP WORLD.
ANGUILLA CHINA
Name: Keesha Fleming Lake
Law Firm Name:
Caribbean Trademark Services LLC
Law office of George C.J Moore, PA
Country: Anguilla
Position: Managing Partner
Website: www.caribbeantrademarks.com
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.
CLIENT RESULTS have earned Michele recognition by Super Lawyers
Magazine, Marquis Who’s Who in America, and Illinois Super Lawyers. She is
an International Advisory Experts Award Winner, was nominated to IAM Strategy
300 – The World’s Leading IP Strategists, selected as a Leading Lawyer, and
included in the Top 100 Alumni We Love by The Hebrew University.
Bask in the calming influence of effective IP portfolio management.
Michele is a founding partner of Advitam IP in Chicago and is passionate about
giving back in a meaningful and measurable way. Learn more at AdvitamIP.com
TRADEMARKS | COPYRIGHTS | TRADE SECRETS | DOMAIN NAMES | LITIGATION
CUSTOMS / ANTI-COUNTERFEITING | LICENSING ALTERNATIVE DISPUTE
RESOLUTION | PORTFOLIO MANAGEMENT ADVITAMIP.COM
Keesha Fleming Lake is an experienced
attorney who has provided legal services
to her clients for over 19 years. Keesha
is a wife and mother of 3 children. She
considers this role as one of her most
important roles in life and one she enjoys
fulfilling. Keesha was born and raised
in the Caribbean. From her early adult
years, she resided both in the United
States and the Caribbean. Keesha
maintains a professional and social
residence between Anguilla and Florida.
Keesha acquired her pre-college, college,
and professional education in the United
Kingdom, the Caribbean, and the United
States. This provided her with the
necessary foundation to build upon and
establish a successful legal career in the
Caribbean Region and the United States.
Keesha started her legal career in the
United States as an Associate for a major
law firm. She provided legal advice to
fortune 500 companies. Keesha returned
to law school and completed her Caribbean
Legal studies at the Eugene Dupuch Law
School in the Bahamas, where she obtained
a Legal Education Certificate. Following
this, she practiced law in Anguilla, thereby
developing her skills and understanding of
the Caribbean region’s legal system.
Keesha has tailored her practice to provide
individualised attention to her client’s
Intellectual Property portfolios. Her
specialty is the management of large and
complex Intellectual Property portfolios
in the Caribbean; over the years, she has
successfully resolved issues before registries
resulting in registrations of trademarks and
processing of other applications.
With her legal education and extensive
background in practicing law in the
Caribbean and the United States, Keesha is
skilled to navigate all aspects of Intellectual
Property Law. Her understanding of the
legal system in the Caribbean has allowed
her to develop the expertise necessary to
build her practice in the region. She is known
among her peers for her diverse knowledge
and skill. She is a registered attorney in
the United States: Michigan, Florida, and
Missouri and also in the Caribbean: Anguilla,
Antigua & Barbuda, and St. Kitts & Nevis.
Keesha has focused her practice on both
Intellectual Property Law and Corporate
Law matters.
Keesha has vast experience dealing with
Caribbean Jurisdictions. She provides
her clients with the advice they need to
succeed in their applications. The services
she provides are especially important
and necessary for the manual Caribbean
jurisdiction. Keesha’s preparations and
experience allow her to provide high-quality
legal advice to address applications before
the Trademark Registries / Intellectual
Property Offices in the Caribbean.
In addition to being a member of the
various Bar Associations, Keesha is an active
member of the International Trademark
Associations (INTA). She is up to date on any
new Intellectual Property laws, regulations,
and practices in the United States and
the Caribbean. She actively serves on
committees helping with the shaping of
laws and procedures, including INTA’s Anti-
Counterfeit Committee. She has authored
and co-authored several articles on the
Trademark law practice in the Caribbean
jurisdictions.
BUSINESS AND PROFESSIONAL
AFFILIATIONS
Florida Bar Association, Anguilla Bar
Association, Antigua & Barbuda Bar
Association, St. Kitts & Nevis Bar Association,
Michigan Bar Association, Missouri Bar
Association, American Bar Association,
Intellectual Property Law Division,
Organisation of Eastern Caribbean States
Bar Association, Association of Caribbean
Corporate Counsel, Intellectual Property
Caribbean Association and the International
Trademark Association – INTA.
15

ANGUILLA
CHINA
Trademark Practice in the
Caribbean Jurisdiction
Understanding the Caribbean
region and the islands individually is
important to provide adequate legal
advice. To effectively advise and
manage large portfolios for brand
owners, counsel must understand
the culture, geographic location,
laws, and trademark systems, as well
as understand the trademark office’s
practices and procedures.
As discussed by Keesha Fleming lake, Managing Attorney at
Caribbean Trademarks Services, LLC - Anguilla and Florida offices
www.caribbeantrademarks.com
As a trademark practitioner providing
services in the Caribbean region,
including managing trademark portfolios for brand
owners, I act at times as local counsel in Anguilla or as
an overseas counsel for multiple Caribbean islands.
The Caribbean is made up of a group
of islands surrounded by the Caribbean
Sea. Like Anguilla, some of the islands to
the north are also bordered by the North
Atlantic Ocean. The Caribbean lies to the
east of the North America region. The
Bahamas and the Turks and Caicos Islands
are also considered part of the Caribbean,
but they do not border the Caribbean Sea.
The Caribbean region also includes Costa
Rica, Belize, Nicaragua, Guyana, Suriname,
Venezuela, and Brazil, although they are
located along the border of South America.
The natives of the islands speak different
languages depending on the colonial
history. There are Spanish, French, Dutch,
and English speaking islands, all of which
have their own unique culture reflective of
the colonial background.
The diverse nature of the Caribbean islands
is also reflected in the trademark legislation,
practice, and procedures. In the early
1900s, the trademark practice was more
standardised and in line with the legislation
of the colonial owners. This has changed,
and the last two decades witnessed major
trademark reform as significant legislative
changes went into effect. Throughout the
region, islands adopted and passed new
trademark acts and/or legislation. Some
of the legislative changes are as follows:
in 2001, Belize and Jamaica passed new
legislation; in 2002, Anguilla’s Trademark
Act went into effect; in 2003, St. Vincent and
St. Lucia’s Trademark Act went into effect; in
2007, Antigua and Barbuda’s Trademark Act
(2003) went into effect; in 2009 Dominica’s
trademark Act went into effect; in 2012
Grenada and Montserrat’s Trademark Acts
went into effect; in 2015 The British Virgin
Island’s Trademark Act went into effect;
in 2017 Cayman Islands’ Trademark Act
went into effect; in 2011 Turks and Caicos’
Trademark Act went into effect, and in 2020
Trinidad and Tobago’s Trademark Act went
into effect.
Each Island Implements its
Own Trademark Regime
Trademark protection in the Caribbean
is dependent on the legislature passed
on each island. There is no universal
approach or universal law that governs the
trademark practice in the Caribbean. Each
island has implemented its own trademark
regime. They each have tailored their laws,
policies, and examination standards to
effectively protect the rights of trademark
owners according to their trademark
regime. With each island having its own
trademark laws, the trademark practice
in the Caribbean region can be confusing
and intimidating. History, culture, and
economic development play a role in the
advancement of the legislature. None the
less, there is consistency between some
islands in the way the trademark practice is
enforced, which helps practitioners advise
and support brand owners to ensure the
brand is effectively managed and protected.
The protection and practice also depend
on the level of independence the island has
from its colonial owners for those islands
that are not independent. For example, the
United Kingdom was the colonial owner of
many jurisdictions, and for some of those
islands, independence from the UK ended
their reliance on UK registrations. To date,
the islands that still accept filings via a
United Kingdom registration are the British
Virgin Islands, Anguilla, Guyana, Montserrat,
and the Turks and Caicos Islands. Islands
such as Jamaica, Antigua and Barbuda, St.
Kitts and Nevis, the British Virgin Islands,
and Dominica no longer accept registration
via a UK registration.
Each island’s trademark enforcement is
dependent on the advancement of the
local trademark office. In some jurisdictions
where the legislature is not updated,
trademark enforcement is not as significant.
However, trademark enforcement is
stronger in jurisdictions with larger
markets and more modern legislature.
Trademark enforcement is dependent on
the operations of the trademark office and
supporting government organisations. The
size of the economy is also important. Most
islands are relatively small, and economic
development is on a smaller scale and
therefore has not yet developed strong
trademark regimes. In these smaller island
jurisdictions, trademark regimes are not
given priority over the development of
other industries such as tourism. There is
a trend towards economic development in
the region, and we remain vigilant on the
lookout for more updates in the coming
years.
Manual vs. Electronic
Trademark Registries
Understanding which islands are manual
versus those that are electronic is essential
for a trademark practitioner who manages
portfolios on multiple islands. While the law
governs the legal requirements, filing and
examination standards vary depending on
whether the trademark office’s operations
are electronic or manual. Obtaining
trademark protection in the manual
jurisdictions may be more challenging as
the scrutiny of paper applications are at a
much higher standard. Manual jurisdictions
still require originals or certified copies of
supporting documents, and requirements
such as legalisation or notarisation of
documents can be burdensome or
impossible in some instances and serve as
stumbling blocks for brand owners. Also,
processing times vary significantly between
islands that remain fully manual versus
those with an electronic system. Delays are
evident in producing status checks, search
reports, and in the processing of trademark
applications, recordal applications, and
renewal applications. The Coronavirus
(COVID-19) pandemic has shed some light
on the challenges brand owners can face
seeking protection of their trademark in a
jurisdiction that operates with manual filing.
During this period, one positive outcome
in this region has been the transition of
some local trademark offices from manual
to electronic filing systems or even partial
electronic systems. This has increased
efficiency as the trademark offices try to
improve processing times.
National Registration
vs. UK Re-registration
Registration of a trademark in the Caribbean
region can be done via a national trademark
application or via re-registration of an
application filed in the United Kingdom
in some jurisdictions. Practitioners must
understand and be readily able to identify
the countries that allow re-registration from
those jurisdictions that are only allowing
national registration. This is important due
to possible cost implications and processing
time differences. A more significant factor
for understanding the registration system
is to differentiate the filing requirements.
Islands such as Anguilla, Guyana,
Montserrat, and the Turks and Caicos Islands
allow national registration and the United
Kingdom re-registration. While islands
like Belize, Jamaica, Antigua, Dominica,
Trinidad and Tobago, and St. Lucia only
allow national registration under the local
trademark legislation and will not accept
filing via United Kingdom re-registration.
Madrid Protocol in the
Caribbean
The signatories to the Madrid Protocol in the
Caribbean are Antigua & Barbuda, Trinidad
& Tobago, Cuba, BES Islands (Bonaire,
Saint Eustatius, and Saba), Curacao, and St
Maarten (Dutch). This filing system allows
for filing in a foreign country (including one
of the Caribbean islands) and designating
multiple jurisdictions for re-registration.
While this system of filing can be more
convenient and more efficient for some
brand owners, a number of provisional
refusals are being issued by Examiners due
to the unique requirements of the specific
jurisdiction. Practitioners managing
portfolios in multiple islands must be
consciously aware of this fact. They must
guide brand owners on marks that should
go the national route for cost and timesaving
benefits or suitable for the benefit of
the filing through the Madrid system.
Understanding
the Jurisdiction for
Protections Purposes
A failure to understand the jurisdiction
can present challenges for many brand
owners. The assumption that trademark
protection in one of the islands in the
Caribbean will extend to many others or
that a United Kingdom registration can
automatically extend to English speaking
islands is incorrect. Each island is a different
jurisdiction within the Caribbean region
independent from the other, and the
trademark practice is governed by local
legislation.
Islands with similar names or islands with
double names can be confusing when
trying to determine the geographical extent
of the protection provided by a registration.
Jurisdictions such as Antigua & Barbuda, St.
Kitts & Nevis, Trinidad & Tobago, St. Vincent
& The Grenadines consist of more than one
landmass; protection on one island covers
both. Another example of a situation that
can be confusing is St. Maarten (Dutch
side), which must be distinguished from St.
Martin (French side); although one physical
landmass, the trademark regime and
laws for each side of the island is different
from the other. The British Virgin Islands
remain a United Kingdom territory, and
the United States Virgin Islands is a United
States territory. Islands that are confused
due to similarity in names include Antigua
vs. Anguilla or Dominica vs. the Dominican
Republic. There are many other examples of
jurisdictional differences among the islands.
The differences can be misunderstood,
and brand owners miss an opportunity to
have the proper geographical protection of
trademarks.
Protection for Service
marks
In the Caribbean, although service marks
can be protected in most of the jurisdictions,
protection for service marks is not available
on all islands. This was not always the
case; however, with the recent passage of
local trademark legislation, in countries
like Antigua, Montserrat, and the British
Virgin Islands, protection for service marks
is now available. However, the trademark
Act in the Bahamas dates back to the early
1900s, and therefore protection for service
marks remain unavailable there. In Guyana,
protection for service marks is not allowed
under national applications. Registration of
a service mark in Guyana is allowed for reregistration
of marks already registered in
the United Kingdom. Suriname also does
not allow protection of service marks.
16
17

CHINA HAITI
Name: Vanessa Abdel-Razak
Law Firm Name: Eproint
Country: Haiti
Position: Partner
Website: www.eproint.com
Anguilla
Antigua & Barbuda
Aruba
Bahamas
Barbados
Belize
Bermuda
British Virgin Islands
Caribbean Netherlands
Cayman Islands
Costa Rica
Cuba
Curacao
Dominica
Dominican Republic
WWW.CARIBBEANTRADEMARKS.COM
OFFICES IN ANGUILLA AND PALM BEACH GARDENS, FLORIDA
TELEPHONE:
USA 1(561) 833-9000
FACSIMILE:
USA 1(561) 833-9990
EMAIL:
IP@caribbeantrademarks.com
Palm Beach Office
George C.J. Moore, P.A.
2855 PGA Boulevard
Palm Beach Gardens, Florida 33410
Grenada
Guyana
Jamaica
Haiti
Montserrat
Puerto Rico
St Kitts & Nevis
St Lucia
St. Maarten
St. Vincent
Suriname
Trinidad & Tobago
Turks and Caicos Islands
U.S. Virgin Islands
Anguilla Office
Calvin Lake Building, Suite 10
The Valley, Anguilla AI-2640
Telephone (Intl) 264-476-9900
Vanessa Abdel-Razak has more than
15 years of experience in the areas of
business and corporate law, intellectual
property law, investment law, and public
law. She provides advice to companies
and individuals to help them conceive the
optimal legal strategy for their business
ventures. She represents her clients
in a wide variety of legal disputes and
transactions. Her practice and experience
allow her to grasp a comprehensive
understanding of her client’s needs
and enables her to deliver sound and
relevant legal opinions. Vanessa has also
provided legal services to public entities
and participated as an independent
consultant in various projects for state
entities and Public-Private Partnerships.
Since 2011, Vanessa is a lecturer at the
National School of Financial Administration
of Haïti (Ecole Nationale d’Administration
Financière, ENAF), where she teaches the
introduction to law and contracts course.
She also lectures at Quisqueya University
since 2016, where she teaches a course
on environmental law. Her main areas of
interest are intellectual property, business
law, corporate law, family law, and public
law.
Vanessa is always giving back to her
community and values being involved in
social programs that provide opportunities
for the less fortunate. As such, Vanessa
serves as a board member for two nonprofit
organisations engaged in health and
education in Haïti.
QUALIFICATIONS:
- Law degree from Quisqueya University
of Haïti (Cum Laude);
- Master’s degree in international and
comparative environmental law from the
University of Limoges, France;
- Master’s degree in public law from the
University of Aix-Marseille, France;
- University Diploma in comparative
legal studies from the University of Aix-
Marseille, France;
- Certificate in drafting and legislative
methods from the University of Geneva,
Switzerland;
- LLM in international business law at the
University of London ( to be completed in
2021).
- WIPO Certificate on Trademarks,
Industrial designs & Geographical
Indications;
- International Centre for settlement of
investments disputes (ICSID) arbitration
rules certificate;
- Aircraft Acquisition and financing,
International Aviation Law certificate,
IATA, Miami;
ASSOCIATIONS AND AFFILIATIONS:
- Member of Barreau de Port-au-Prince
(Port-au-Prince Bar Association);
- Member of Association Internationale
pour la Protection de la Propriété
Intellectuelle, AIPP;
- Arbitrator at Chambre de Conciliation et
d’Arbitrage d’Haïti ;
- 2nd Vice president at Rotary- Club PV-
SUD;
LANGUAGES:
French, Spanish, English (full proficiency).
18 19

Arriving in Haiti, I quickly got used to
the “Caribbean” lifestyle, although
very different from what I had known
until then. My academic course in
Haiti began in a congregational
school for girls and ended with a
French baccalaureate in literature.
At Quisqueya University in Port-au-
Prince, I obtained my law degree
before embarking on studies of
legal specialisation in Universities
in France. I had decided from a very
young age that I would study law. I
loved reading and writing and had
a tendency to protest whenever the
opportunity arose! (My career was
all mapped out!). Over the years, the
decision to become a lawyer was
solidified until it came to fruition
when I obtained my law degree, not
without challenges. Indeed, I realised
that historically our society had been
marked by an archaic legal system,
and that like those who preceded
me, I would have to work hard to
find a place for myself in this male
profession. In addition, my plan to
become self-employed would be
fraught with challenges that I was
ready to take on.
A legal system
hostile to women.
In the aftermath of Haiti’s independence
in 1804, a new state was established,
proclaiming the principles of freedom and
equality that had long been denied to
its inhabitants by the colonialist system,
yet this new free state adopted the set of
Napoleonic codes. The Haitian civil code,
modeled on the Napoleonic code, was
published in 1825 with some changes
but carried many unfair provisions. In this
CHINA HAITI
Women and law.
Experiences and lessons.
As discussed by Vanessa Abdel-Razak, Partner at Eproint Haiti
www.eproint.com
I am a lawyer, a proud mother of
two beautiful children, and a wife.
I spent several years of my childhood in Madrid,
where I completed part of my elementary schooling.
code, a married woman was deprived of
rights and was placed under her husband’s
authority, who administered her property
and authorised her to work. In 1944, the
law allowed married women to dispose
of part of their salary. In 1950, the Haitian
Constitution authorised Haitian women to
vote, and finally, in October 1982), part of
the discriminatory provisions concerning
women were repealed from the Civil Code.
We, therefore, come from a legal past that
has not favoured the development of
women. Women are evolving in a society
that still retains traces of sexism and
discrimination against them. We have come
a long way; however, today, we follow the
example of exceptional women lawyers
who have led the way.
In France in 1900, Sophie Balashowky-Petit,
and Jeanne Chauvin, were the first women
to be able to take the oath of office in Paris.
In Haiti, Madeleine Sylvain-Bouchereau
was the first female law graduate in Haiti
(1933) and the first female candidate for the
senatorial elections in 1957. Ertha Pascal was
a lawyer registered with the Port-au-Prince
Bar Association in 1971, who then became
the first female judge at the Haitian Supreme
Court (Cour de Cassation) in 1986and later
the first female president of the Republic
of Haiti in 1991. In 2020, Marie Suzy Legros,
became the first female head (batonniere) of
the Port-au-Prince bar association. She took
the reins of the corporation with courage
and firmness in the ruthful assassination of
her predecessor a few months ago. This is
an outstanding achievement because the
history of the Port-au-Prince bar has been
male since 1859. Even when today, many
women have entered the profession, the
idea is still widespread that a feminised
profession is one that is devaluated.
A female lawyer
must prove herself.
Aware of the challenges that awaited me
as a young lawyer, I began my career with
determination and the desire to create
a place for myself in the profession. So, I
decided to specialise by doing not one but
two master’s degrees. I quickly realised
that despite my degrees and professional
accomplishments, I still had to prove myself
more than my male colleagues, who often
fell short of my skills. Unfortunately, this is
a reality for women in different areas of
the professional world, and this unfair rule
is no exception for women lawyers. In my
profession, I am often forced to adopt an
aggressive attitude in order to be able to
counter any sexist remarks or attitudes of my
colleagues. Indeed, female lawyers are more
likely to be verbally harassed in the work
environment, office, or court. Comments
about our physique, sometimes veiled in
the form of compliments, have no place in a
courtroom or a business meeting. Since the
18th century, unfortunate comments have
been made with regard to female lawyers,
such as that of this French deputy during
parliamentary debates relating to the voting
of the law which would authorise women to
take an oath at the Paris bar association “If
women receive the skilful in pleading, do we
not risk accusing the magistrate of having
allowed himself to be convinced by means
other than good legal arguments?”
My professional career is marked by
collaborations in two very different
prestigious law firms in Port-au-
Prince. I experienced different working
atmospheres, but each firm has, in its own
way, influenced and contributed to my
professional development.
Fifteen years ago, my first experience in a
law firm propelled me to manage complex
cases and manage a demanding and
diverse clientele. Without any previous
real experience and being a mum of a
year-old baby at the time, I faced many
challenges that I did not expect, but which
gave me the opportunity to demonstrate
my abilities. In the workplace, I tried to put
aside my maternal instincts because I did
not want to be stigmatised or to appear that
motherhood made me weak or reduced
my skills. The law firm’s managing partner,
who had recently celebrated 100 years of
existence, treated me from my first day as
an experienced lawyer. Without hesitation,
he entrusted me with cases that marked
my professional life; I keep fond memories
despite the many challenges faced.
My second experience working in a law
firm in Haiti was different as I arrived with
significant knowledge and new skills. I no
longer needed to prove myself to others.
However, it was a traditional law firm
whose founding partners were from a
generation not open to the feminisation
of the profession. It was this collaboration
that pushed me to set up my own firm. A
project that was not new but that I had
been reluctant to implement for fear of the
unknown.
A woman-owned
law firm.
Opening my practice was one of the best
decisions of my career. I knew that I needed
to take a leap of faith and open my own
firm. Aware of the investment that this
represented and the issues and challenges
that awaited me, I replaced fear with
courage and created Cabinet Abdel-Razak
&Associés, composed of a single lawyer,
“me”. To my surprise, the small clientele
that I had built up over the years followed
me, and this clientele grew with time. Very
quickly, I had to find associates to help
me with the processing of the cases. It is
a known fact that we can start to walk the
road alone and arrive far. Still, if we want
to reach even further and achieve the
objectives that we have set for ourselves,
we must surround ourselves with people
who have complementary skills and share
similar aspirations to ours. After a few
years, I opened my practice to partnerships
that allowed me to experiment with new
working methodologies and open to new
perspectives.
My partnership with Eproint results
from my collaboration with my colleague
Leyla Harper-Dominique who, from
her integration into the firm, brought
innovative ideas and efficient systems.
Leyla and I partnered with Eproint, a
firm founded in 2000 offering intellectual
property services in Latin America and the
Caribbean. As the Haitian branch of this
dynamic and renowned IP firm, we are
happy to assist our local and international
clients in protecting their branding assets.
Our diverse cultural influences allow us to
have a legal offering and customer service
that meets international standards and the
needs of a cosmopolitan clientele.
Intellectual property services in Haiti require
a mobilisation of skills and resources to face
the logistical and administrative constraints
that exist in the country. The timeframe for
procedures can be slow since the laws are
outdated and are not necessarily adapted
to the current reality. The inadequacy of
certain practices with regards to the legal
framework and the weakness of legal
sanctions are some of the challenges that
one must consider when implementing
strategies for clients.
Eproint Haiti’s policy is to respond to client
requests without delay and to maintain fluid
and open communication with all parties
involved. We anticipate obstacles and
deliver results across the full range of legal
services we offer, particularly trademark
registration, trade name registration, and
copyright protection. Despite the daily
challenges encountered in the profession
and the management of a law firm, there is
no doubt that the benefits and satisfaction
one feels when guaranteeing a standard of
service make it well worth it.
Working in Intellectual property in Haiti has
taught me to implement an entrepreneurial
point of view, invest in the appropriate
technology, surround myself with people
who have complementary skills, and use
marketing and promotional tools to develop
a network of contacts. Persistence and a
clear vision of my goals were important in
achieving success in this field.
Success is a
personal matter.
Remember that the very notion of success
varies from person to person; we can
easily be influenced by representations
of success that do not suit everyone.
Each may have a different view of what
constitutes professional success. It may
be about financial success, social success,
self-fulfillment, happiness at work, worklife
balance, climbing the ladder, achieving
great things, inspiring others, having the
power to influence, and making a difference
in the world to serve others. The bottom line
is that success is defined in terms of each
individual. Success is the ability to achieve
what is most important or valuable in our
life. I have walked a long way on the road to
success and hope I’m able to inspire women
and show them that anything is possible
despite the many challenges we face. I will
continue to work hard to pave the way for
the women of the generations to come.
20
21

JAMAICA
CHINA
Name: Dianne Daley McClure
Law Firm Name:
Foga Daley Attorneys-At-Law
Country: Jamaica
Position: Founding Partner
Website: www.fogadaley.com
Dianne Daley McClure is one of the
founding partners of FOGA DALEY
and the head of the firm’s Intellectual
Property (IP) Department. Her practice
areas include trademark and patent
prosecution, commercial IP transactions
and disputes, IP portfolio management,
and contracts in media, entertainment,
and sports.
She has a Bachelor of Laws Degree with
Honors from the University of the West Indies
(UWI) and a Master’s Degree in Comparative
Law specialising in IP and International
Copyright from McGill University, where
she attended as a Canadian International
Development Agency (CIDA) scholar.
Dianne was called to the Jamaican Bar in
1990 and has over twenty years of IP law
and practice experience. Her first job in
the field was as legal director and head
of Jamaica’s Copyright Office in 1995. She
advised the government on IP legislative
and policy issues and represented Jamaica
as an IP Expert at international forums,
including the World Intellectual Property
Organisation (WIPO) and UNESCO. Dianne
was active in the negotiations of the WIPO
Internet Treaties. She also coordinated the
establishment of the Jamaica Intellectual
Property Office (JIPO) in 2001 and served the
JIPO Advisory Board’s acting Chairman.
She is an Adjunct Lecturer for the Master
of Laws Degree Programme on IP in the
Creative and Cultural Industries. She lectures
the Entertainment Law LL.B. Course at the
Faculty of Law, UWI Mona, and Patent Law
for the LLM Programme at UWI Cavehill as a
WIPO Tutor.
She has been Chairman of the Intellectual
Property Committee of the Jamaican Bar
Association for several years. Her other
professional memberships include:
• The International Trademark Association
(INTA)
• The International Association of the
Advancement of Teaching and Research in
Intellectual Property (ATRIP)
• The Global Advertising Lawyers’ Alliance
(GALA)
• The AEA International Lawyers Network
• Justinian Lawyers
• The Intellectual Property Caribbean
Association (IPCA).
Since 2002 Dianne has been an active
member of INTA and has served the INTA
Public Resources Committee, INTA Related
Rights Committee, the Geographical
Indications Committee, and currently the
Copyright Committee. Dianne has also
been a contributor to the INTA International
Oppositions Guide since 2003.
She is the Chairman of the Jamaican
Copyright Licensing Agency (JAMCOPY) and
Company Secretary for the Jamaica Music
Society (JAMMS), both National Copyright
Management Organisations.
Dianne has authored several publications on
IP, including:
• Jamaica: Intellectual Property,
International Encyclopaedia of
Laws, Kluwer Law International
(2008), Intellectual Property -
Suppl. 47 (September 2008) (a
Monograph)
• Jamaica Chapter published in
Copyright throughout the World,
edited by Prof. Silke Von Lewinski,
West (2009, updated 2018) 147
pages)
• Shades of grey: uncovering the
century-old imperial imprint on
Jamaica’s modern Copyright Act
– published in A Shifting Empire:
100 Years of the Copyright Act
1911 edited by Ysolde Gendreau
and Uma Suthersanen, Edward
Elgar (2013) (pp. 168 – 203)
• Canada’s Treatment of
Geographical Indications:
Compliant or Defiant, published
in An Emerging Intellectual
Property
Paradigm:
Perspectives from Canada,
edited by Ysolde Gendreau,
Edward Elgar (2008) (pp. 35- 66)
Her previous appointments include
Consultant for the Commonwealth
Secretariat and the UK Commission on IP
Rights, Deputy Chairman, Copyright Tribunal
and Special Ministerial Advisor on IP.
22 23

JAMAICA
Name: Nicole Foga
Law Firm Name:
Foga Daley Attorneys-At-Law
Country: Jamaica
Position: Managing Partner
Website: www.fogadaley.com
South America
Nicole Foga is the Managing Partner
of Foga Daley and heads the firm’s
Telecommunications, Media &
Technology Department. Her practice
areas include Information Technology
Law, Data Protection and Privacy Law,
Intellectual Property and Mergers and
Acquisitions. Ms. Foga holds an LLM in
Commercial Law (Aberdeen University),
LLB (UWI), and a BA (1st Class Hons.)
(UWI).
Ms. Foga chairs the Telecommunications,
Broadcasting, and Technology Committee
(TBTC) of the Jamaican Bar Association
(JAMBAR), is Chairman of the University of
Technology Pension Fund, a Vice Chairman of
Jamaica’s Copyright Tribunal and member of
the Legal and Enforcement Sub-Committee
of Jamaica’s National Environment and
Planning Agency. She is also a member of the
International Trademark Association (INTA),
the INTA Data Protection Best Practices
Subcommittee, ITechLaw Association,
Society for Computers and the Law, and
an Associate Member of the American Bar
Association and the Institute of Electrical
and Electronics Engineers.
She is a Director and the Company Secretary
for the Usain Bolt Foundation, as well as
Kingston Properties Limited. This publicly
traded company is Jamaica’s pioneer Real
Estate Investment Trust. She served as
Director and Secretary of the Environmental
Foundation of Jamaica for six years and was
a member of the International Committee of
the Council on Foundations in the USA for
four years.
Ms. Foga has been a featured speaker on
various Information and Communication
Technology Law issues, including
cybersecurity, professional standards in
the use of technology, and data privacy
and protection. In 2020 she moderated
two JAMBAR Continuing Legal Education
Webinars: November - “Screened Out!
Lawyers Need Time to Think!” and
July - “Data Processing Standards for
Lawyers”. In 2019 she presented on Ethical
Considerations in the Use of Technology
in the Practice of Law for the JAMBAR in
September. In June, she was a panellist who
spoke on Data Protection: What next for
NIDS?: Understanding the Supreme Court
Ruling and Looking Ahead at the Interim
Cyber Security Conference organised by
the Mona ICT Policy Centre. In April 2018
and December 2017, she presented on the
topic 21 st Century Digital Law Challenges
for the General Legal Council as part of its
Continuing Legal Professional Development
program.
As Chair of the TBTC, she led the team
representing JAMBAR which addressed the
Joint Select Committee of the Houses of
Parliament on the Review of the Cybercrimes
Act in March 2013, as well as the team which
addressed the Joint Select Committee of the
Houses of Parliament on the Data Protection
Bill in March 2018.
Ms. Foga authored Cyber Law in Jamaica,
2012, and co-authored with Dianne Daley IP
Rights and Caribbean ICT Industries: The
Case for Reform - published in Ringtones
of Opportunity, 2012.
Previous appointments include General
Counsel in the Office of Utilities Regulation,
Legal Advisor to the Broadcasting
Commission, Crown Counsel in the Attorney
General’s Department. She has represented
Jamaica at various international and regional
conferences on telecommunications
and intellectual property and was the
Chairman of the World Intellectual Property
Organisation (WIPO) Caribbean Regional
Committee on Electronic Commerce and
Intellectual Property.
Sponsored by
24
25

COLOMBIA
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 on Civil Law. She
is the Vice-Chair of the Anticounterfeiting
Committee in INTA and is also a member
of ACPI, IPCA, and APRAM associations.
Ms. Vernot is an expert in the protection of
trademarks throughout Latin America and
Central America, advising several companies
at the regional level in the definition of
strategies to protect trademarks and
enlarge markets while providing solutions to
fight contraband and counterfeit. Ms. Vernot
was Regional Outside Counsel for five
years, assisting the General Legal Counsel
in the fight against the Illegal Trade for the
Company PMI, specifically covering the Latin
American Region.
Ms. Vernot started her practice in trademarks
in a French Company, SODIAL, in Paris. She
then worked for three years in Bogota for
the law firm Cavelier Abogados. Ms.Vernot
founded her own practice, Estrategia
Juridica, in 1998. Her Practice areas include
Brand Protection, Criminal and Civil Law,
Unfair Competition, Trademarks, Patents,
Copyrights, Consumer Law, and Data
Protection.
Claudette Vernot was the pioneer woman
lawyer in Colombia for IP criminal cases for
brands such as Louis Vuitton, Oakley, Nike,
Adidas, and Microsoft. New actions such as
Customs Border Measures and Consumer
law were part of the new strategies for brand
holders. She began programmes for training
Customs officers, police force members, and
different agencies in 1999. Her experience
in the Intellectual Property field makes her
one of the most recognised attorneys in
Colombia.
She has trained her team to understand
that the client is a business partner and they
must collaborate to find strategies to protect
their IP Portfolio. She works for several brand
holders, advising the Latin American Region
in order to find legal strategies against
transnational counterfeiters. She focuses
her programmes on the main Ports of the
country. She has actively collaborated with
The National Tax and Customs Direction in
the modifications to Customs Law related to
border measures in the country. Nowadays,
she represents IP matters for prestigious
companies like Crocs, Luxottica, Specialized,
Epson, Nokia, Polo Ralph Lauren, Harman,
Grupo Bimbo, Schaeffler, Fox Head, Monster
Energy, among others.
She has worked as a professor in the area of
Commercial Contracts related to Industrial
Property Rights, Copyrights, and New
Technology at Universidad Externado de
Colombia.
Ms. Vernot speaks Spanish, English, French,
and Italian.
Trademark falsification
A GROWING PROBLEM FACED BY
TRADEMARK HOLDERS
Written by Claudette Vernot, Director at Estrategia Juridica, Colombia
www.estrategiajuridica.co
In Colombia, according to the report dated November
12, 2020 issued by the DANE (National Administrative
Department of Statistics) 1 , as of September 2020, the
number of containers from different countries amounts to
29,201,641. These containers mostly come from the United
States, China, Mexico and Brazil.
Of these imports, a low
percentage can be identified
as trademark falsification by
the Customs authorities (in
Colombia, it is the National
Tax and Customs Directorate,
DIAN) which, in their hard work,
stop, check, and report imports
whose products are potentially
suspected of incurring in this
crime.
As falsification is a crime against
the economic rights of a company
that owns a trademark, Customs, as
an administrative control authority,
will depend on the disposition
of the trademark holder being
infringed in order to act and stop the
nationalisation process or transit of
the suspicious merchandise. Once the
coordination between the customs
authorities and the representatives
of the owner of the trademark
is achieved, the merchandise is
detained and brought before the
judicial entity in charge of the
protection of the Intellectual Property
of the companies, in this case the
Superintendence of Industry and
Commerce, the Attorney General’s
Office and/or the Judicial Police.
Fotografía por: Estrategia Juridica
Procedimiento en Puerto de Cartagena – diciembre de 2020
As a result of this type of procedure in
Colombia, a large number of products
were seized; in this case, from a wellknown
glasses brand. The products
were imported from China and were
detained by the customs authorities
of the port of Cartagena. Inside the
container, 128 boxes were found, each
containing 600 glasses, for a total
of 76,800 pairs of glasses that were
detained by customs with the support
of the trademark owner. These goods
will remain in custody of Customs in
Cartagena until the product is seized
by the Judicial Police in Cartagena,
on the orders of a Prosecutor of that
jurisdiction. Once the product is in
the custody of the prosecution, an
official police expert will prove that
the product is counterfeit and the
prosecutor will order the destruction
of the merchandise.
To conclude:
The previous case is just one of those
that were successfully executed in
2020; and despite the hard work
of the Colombian authorities, the
amount of imports received on a
monthly basis are so high that much
of the illegal merchandise imports
achieve their nationalisation process,
and therefore their final destination
in stores, wineries and online market
places.
Despite the current contingency of
COVID-19, it has been possible in
Colombia to identify imports with
counterfeit products entering the
territory, as well as the progressive
increase in online businesses trying
to market such products. This being
the result of months of closings of
commercial premises due to the
quarantine and the current world
economic situation, which has forced
online businesses to be the best
option for selling illegal products. The
challenge that trademark owners face
today, as well as their representatives
in each country and the authorities
themselves, is to achieve strategies
and join forces to fight against the
scourge of illegality.
1
https://www.dane.gov.co/index.php/
estadisticas-por-tema/cominternacional/
importaciones
Fotografía por: Avigator Fortuner/shutterstock
26
27

CHINA SPAIN
Europe
Name: Isabel Bandín Barreiro
Law Firm Name: GÓMEZ-ACEBO & POMBO
Country: Spain
Position:
Digital & Innovation Lawyer/Associate
Website: www.ga-p.com
Isabel Bandín Barreiro is a Spanish legal
practitioner, intellectual property,
technology, digital & innovation
expert, lecturer, and public speaker.
She is currently an associate at one of
the leading intellectual property and
digital law firms in Spain, Gómez-Acebo
& Pombo (“GA_P”), working with some
leading brands and digital/technology
companies in the world.
Isabel holds a Law, Development and
Diplomacy degree from Georgetown
University (Washington D.C., USA) as well
as a double degree in Law and Political
Science and Public Administration from
Universidad Pontificia de Comillas (Madrid,
Spain), where she also obtained a double
LLM in Intellectual Property and Admission
to the Bar. Additionally, Isabel obtained
an executive program in Privacy, Data
Protection, and Cybersecurity from the wellknown
I.E. Law School and has been certified
by the Blockchain Intelligence Institute as
an expert in blockchain, smart contracts,
tokenisation, and crypto actives.
She has a strong understanding of all
aspects of I.P. and technology matters (with
a particular focus on disruptive technologies
& innovation), as well as advertising and
digital marketing regulations. She is part
of GA_P´s litigation team and provides
strategic legal advice to high-profile industry
names operating in multiple end-markets
such as entertainment, digital, retail, luxury,
and technology. Indeed, in 2020, Isabel’s
advice on a first-of-a-kind project involving
blockchain & artificial intelligence was
ranked by Expansión Jurídico within the Top
10 most-disruptive projects on a national
level.
Even though Isabel worked briefly for the
United States Federal Government in 2013,
her career has mainly been developed
in Spain, where she has worked for two
of the most important national law firms
(Cuatrecasas and Gómez- Acebo & Pombo).
Moreover, Isabel actively collaborates with
several top-leading organisations such as
the Interactive Advertising Bureau (IAB)
-the world’s largest association for digital
communication, advertising and marketing-,
the International Bar Association (IBA) -the
world’s leading international organisation of
legal practitioners, bar associations and law
firms- and Interlaw -a leading global network
of pre-eminent law firms worldwide-.
Sponsored by
28 29

IP CONSIDERATIONS OF
SPAIN
Augmented and
Virtual Reality
Spain is a promising player on
the global AR and VR scene,
especially active in the creative
VR production and experiences,
industrial applications, and postproduction
software. Driven by these
breakthrough technologies, and in
just a few minutes, we can be visiting
the Prado Museum without leaving
our house or virtually transporting
ourselves to those holidays that we
had to cancel due to the pandemic
by using new filters on Instagram or
Snapchat. We can be virtually trying
out our new bespoke car long before
it is manufactured or learning how
to operate a (virtual) heart - crossing
limits that would otherwise be
unthinkable.
Written by Isabel Bandín Barreiro Gómez-Acebo & Pombo (GA_P), Spain
www.ga-p.com
Virtual Reality (VR) and
Augmented Reality (AR)
are two disruptive technologies that have bridged the digital and
physical worlds. Although they first became popular in the fields of
gaming, live events, and entertainment, they have widely diversified
towards industries such as healthcare, retail, education, hospitality,
real estate, architecture, or the military, among many others.
As AR and VR technologies emerge, so do
legal questions arising from their use. These
technologies have substantially impacted
society, with major advances that, in
addition to generating improvements, also
represent a challenge from the regulatory
point of view. However, both AR and VR lack
an ad hoc legal framework in both Spanish
and EU regulations. Therefore, businesses
need to be proactive in tackling these
issues, as it will take courts more time to
duly interpret how to apply traditional laws
to these never seen before scenarios.
As a result, third parties that engage with
AR/VR providers and platforms will need
to carefully formalise the understanding of
rights and expectations before sharing any
ideas. Corporations on both sides of any
contract -for the use of these technologiesmust
update their initial checklist and take
into account, at least, the following topics:
(a) Engaging in a previous due-diligence
exercise in order to avoid and/or prevent
any third-party rights infringement.
(b) Protecting pre-existing rights and
appropriate allocating future rights in
creations and/or designs that might be
created.
(c) Considering future exploitation
rights, exclusivity, and territorial scope.
(d) Liability allocation (i.e., through a
service agreement with the technology
service provider and via terms and
conditions for the corresponding users
of the VR/AR experience).
As AR/VR technology becomes more
popular, there will be unintended legal
consequences and liability issues that
companies, brands, and AR/VR content
creators must be aware of.
The settled dispute between Facebook’s
virtual reality subsidiary Oculus and game
maker ZeniMax Media (Zenimax Media
Inc. v. Oculus VR LLC) requiring Facebook
to pay 500 million US Dollars in damages
for copyright infringement is just a mere
example of the abovementioned potential
legal consequences.
Listed below are several intellectual
property key issues that should be
considered, at least, by the parties engaging
with these technologies:
1. Inserting intellectual property of
the real world into the virtual world: to
create a realistic virtual experience for the
consumer, virtual or augmented reality
developers (or brands who want to use
these technologies) often base or inspire
such “virtuality” in the real world. The
virtualisation process usually involves using
and reproducing assets that are protected
by image and intellectual property rights
in the real world (e.g., brands, trade
names, designs, drawings, etc.). Therefore,
corporations that use these technologies on
a commercial level must adopt a proactive
approach to monitoring content included in
the VR/AR environment and its compliance
with traditional intellectual property and
image regulations.
According to Spanish Intellectual Property
Law (Real Decreto Legislativo 1/1996,
de 12 de abril, por el que se aprueba el
texto refundido de la Ley de Propiedad
Intelectual, regularizando, aclarando y
armonizando las disposiciones legales
vigentes sobre la material), owners of
intellectual property rights have control
not only over identical, substantially similar
or transformed reproductions in the same
medium (in the real world) but also over
those derived in other formats (such as the
virtual or augmented reality environment)
even if they did not exist when the original
work was created. Furthermore, in Spain,
IP owners -as part of their moral rights- are
legally entitled to insist on the respect of
the integrity of their work and to prevent
any distortion, modification, alteration, or
derogatory action (such as its transformation
into a 3D or 360º environment for VR
experiences) which would be prejudicial to
his/her legitimate interests or reputation.
2. Virtual intellectual property rights
in the real world: VR systems allow the
creation of parallel virtual universes and
products within them that are likely to have
intellectual property rights protectable
in the real world. Therefore, it is highly
recommended that the creators and users
of an AR/VR environment expressly regulate
who owns the intellectual property rights
generated in the virtual world (either
individually or through the corresponding
terms and conditions of use).
3. VR and AR rights under existing
contracts: another significant aspect on
the contractual front is to appropriately
determine who owns VR and AR rights
under existing contracts that were drafted
before these technologies existed (i.e.,
similar to the legal controversies over who
owned video-on-demand rights under
contracts that were drawn before those
rights existed). Moving forward, it will be
critical to draft an agreement with scalpellike
precision to allocate who owns VR/AR
rights and to what extent.
4. User generated content: it is very common
for users of an augmented or virtual reality
environment not to be passive guests, but
to actively contribute to the experience,
for example, by adding photographs,
videos, music, and other content that
is often protected by intellectual or
industrial property rights. Therefore, the
risk of infringement of third party rights
is significant, especially as platforms
often operate in real-time, and there is no
possibility to review the content previously.
The legal limits that allow the use of certain
types of content based on freedom of
expression or parody are hardly going to
be as flexible when these contents are used
for an economic purpose. Consequently,
it is highly recommended to sign a user
generated content terms and conditions of
the virtual or augmented reality experience
or a specific user generated content policy
beforehand.
5. Trademark issues: trademark
infringement will become more complex,
particularly when an AR application overlays
the trademarked content in the real world.
So far, due to the relatively young age of VR
technology, there is no case law in Spain
regarding VR/AR uses and its implications
for trademark regulation. However,
analogous cases held in other jurisdictions
-such as the United States- may offer an
interesting perspective on the problems
that can emerge in this regard. In the Marvel
v. NCSoft case Marvel Enterprises sued
NCSoft (who had developed an online virtual
world called City of Heroes where players
could create avatars and design superhero
costumes) for providing tools to its users to
design superhero costumes for their avatars
that allegedly infringed trademarks and
copyrights of its well-known superheroes.
The court dismissed Marvel’s trademark
claim, stating that the players did not use
the trademarks “in commerce” but was mere
gameplay. The use of Marvel’s superheroes
names by players within the game was not
of an infringing nature. However, prospects
for a successful claim improve if the designer
and/or developer generates merchandise
including a real-world sign in the virtual
world and sells it for real or virtual currency,
as was the case in Taser Int’l Inc. v. Linden
Research, Inc. , in which the game, ‘Second
Life’, stores were selling replicas of Taser’s
stun guns to players. In this case, a decision
was not rendered, as the parties reached
an out-of-court settlement agreement, but
Linden ended up removing the stun guns
from the online store.
6. Patents: with these technologies
rapidly expanding and evolving with their
unique utilities; companies should seek
patent protection for their applications.
To satisfy patentability requirements, a
patent claim for a VR/AR technology must
be drafted cautiously so that the software
part is incorporated into or working in
combination with the physical device(s) (for
instance, computer-readable medium or
hardware). It remains to be seen whether
the technology industry will distance itself
from patenting and pursue alternative or
hybrid protection (e.g., copyright, anticircumvention
regulation, and/or licensing
agreements).
Conclusion
Intellectual property regulations have not
been traditionally designed to be applied
in an environment where reality and virtual
simulation are intertwined. Therefore, it
is necessary to pay particular attention
to the first of a kind legal issues that may
arise in the context of VR/AR environments,
especially in countries such as Spain, where
there is no case law so far in this regard.
As these new technologies continue to
develop, corporations, brands, and creators
of VR/AR environments should consider
developing a virtual and augmented reality
strategy in order to prevent (or, at least,
mitigate) any potential legal issues arising
from the use of these technologies.
1
ZeniMax Media, Inc. v. Oculus VR, LLC United States
District Court for the Northern District of Texas Case No.:
3:14-cv-01849-K,
2
Marvel Enterprises, Inc. v. Ncsoft Corporation. Case No. CV
04-9253-RGK (PLAx).
3
Taser Int’l, Inc. v. Linden Research, Inc., 2:09-cf-00811-ROS
(D. Az 2009)
30 31

UNITED CHINA KINGDOM
Name: Dr. Cerian Jones
Law Firm Name: Cerian Jones IP
Country: United Kingdom
Position: Founder and Director
Website: www.cerianjonesIP.com
Cerian developed an early love of
language and science thanks to a mother
who studied classics and a bi-lingual,
bookworm father who, as an architect,
also infused scientific, mathematical,
and engineering influences. When it
came time to go to University, though,
Cerian chose the language route and
gained an Honours degree in English.
Still not wanting to leave University, she
completed an M.Sc. in Computing which
then led naturally into a perfect fusion
of language and Computing Science by
way of a Ph.D. in Artificial Intelligence
(Natural Language Processing) at
Durham University, the U.K. in the days
long before “A.I.” became a buzzword.
Eleven years then followed as a university
lecturer in computing science in Canada.
During this time, Cerian decided to
go to law school part time to satisfy a
long-standing curiosity about the legal
profession.
Although moving back to the U.K. in
2006 seemed a perfect time to make a
career change and finally leave University,
a background in language, computing
science, and law seemed an incongruous
combination of academic disciplines. Until
that is, she discovered what patent attorneys
do for a living.
Drafting, prosecution, and commercial
leverage of software-related patents are a
natural mix of all three of those disciplines.
When drafting a set of patent claims, you
need to understand the inventor’s creation
at a fundamental, technical level. This
is especially important when it comes
to software due to the additional legal
complications that the subject matter
attracts in various jurisdictions. You also
need to abstract away from all unnecessary
elements to arrive at the essential features of
the invention to ascertain the core, inventive
concept – abstraction is a common and
necessary skill in various forms within
computing. You then need the natural
language skills to express that inventive
concept broadly yet succinctly. Finally, (of
course) you need to understand the legal
framework within which the patent will be
prosecuted, commercialised, and possibly
enforced.
It is perhaps unsurprising, then, that as a
European patent attorney, Cerian represents
world-leading clients who produce
disruptive, game changing technologies
in a variety of software-related sectors.
She has extensive experience and a
niche specialism in drafting, prosecuting,
and commercialising patents in various
technical fields such as blockchain and
cryptocurrency, Fintech and the payments
industry, cybersecurity, A.I., and telecoms.
Cerian is a co-founder of the U.K.’s largest
cybersecurity cluster and chairperson of the
Blockchain Connected initiative in Wales,
U.K. She is a regular speaker at conferences
on I.P., software patents, blockchain, and
related topics.
In her spare time, she is out walking with
family and the dogs, or wielding a spade at
her allotment, or enjoying a fun night out
with friends, and generally enjoying the
good life.
Specialist in patent work relating to softwareimplemented
technologies, including blockchain,
cryptocurrency, Artificial Intelligence, cybersecurity,
and FinTech.
Patent
drafting
Prosecution
and FTO
IP
strategy
Infringement
opinions
Tel: +44 (0)7309 030020, email: cerian@cerianjonesIP.com
https://www.linkedin.com/in/cerianjones/
Address
Bristol & Bath Science Park,
Dirac Crescent, Emersons Green,
Bristol BS16 7FR, U.K.
32
33

Name: Izabella Dudek-Urbanowicz
Law Firm Name: Patpol European and
Polish Patent and Trademark Attorneys
Country: Poland
Position: Managing Director
Website: www.patpol.pl
Izabella Dudek-Urbanowicz is a Polish
and European Patent and Trademark
Attorney. She is a respected practitioner
in the field of trademark law with a proven
track record of trademark prosecution
and contentious cases. She is a member
of INTA, Marques, PTMG, and ECTA.
Mrs. Izabella Dudek-Urbanowicz was
elected Managing Director of Patpol in 2016.
She leads a team of over 90 people. Her key
responsibilities include the development
of business strategies focusing on people
and innovation. Mrs. Dudek-Urbanowicz is
also the head of the Trademark and Design
Department, where she proves herself to
be an experienced trademark attorney
and a capable team leader with excellent
managerial skills.
Mrs. Dudek-Urbanowicz has a legal
background as a Master of Laws from the
Faculty of Law and Administration at Warsaw
University.
Amongst the clients of Mrs. 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 is wellmanaged
won clients’ cases and satisfied
clients.
At work, what she appreciates most is daily
contact with people, both clients, and
colleagues. During her tenure, Patpol has
grown through a constant development
process, through new milestones in the
company lifecycle, such as founding Patpol
Legal – a full-service law firm – in late
2018. In addition, the introduction of new
employee benefits, i.e., packages, additional
days off, or healthcare and sports packages.
POLAND
During the Covid-19 pandemic, Mrs.
Dudek-Urbanowicz ensured the business
processes ran smoothly and continuously
for the clients. Izabella provided consistent
communication, always being there for her
team and clients. She managed to keep high
morale within the team despite a remote
way of working for most of the employees.
In her own words: “Patpol is one of the
unique firms with very high retention. This
company has its own unique energy, which
consequently attracts people who are not
only great specialists, passionate about their
work but also personalities with good spirit
and broad intellectual horizons and curiosity
for the world.”
Recently in 2020, Mrs. Dudek-Urbanowicz
was recognised as the recommended
professional in Poland according to the WIPR
rankings of the most influential women in
the IP world. She is one of two women from
Poland recommended in this selection.
Outside work Mrs. Izabella likes spending
time with her daughters, reading fantasy
or detective books. Also, she is a big fan of
hiking excursions and collecting Japanese
dolls.
About the IP market in Poland:
“I am pleased to note the positive trend
among Polish small, medium, and large
entrepreneurs regarding the demand for
protection of their industrial property
rights - not only trademarks but also their
inventions. There is a growing awareness
amongst businesses, research centres,
or NGOs about various possibilities of
financing innovations. Entrepreneurs
use these funds to make their inventions
– quite often revolutionary - recognised
worldwide.”
POLAND
Anna is a Polish and European Patent and
Trademark Attorney and a Professional
Representative before EUIPO. She has
a PhD in biology and specialises in
life science solutions, biotechnology,
medicine, and pharma. Anna is a highly
qualified patent attorney and an expert
in the protection of innovative solutions
in numerous areas of life-science,
mainly in biology, biotechnology,
chemistry, pharmacy, human and
veterinary medicine, mechanics and
nanotechnology.
She represents clients in proceedings before
the Polish Patent Office, European Patent
Office (EPO), and the World Intellectual
Property Organisation (WIPO) for patents
and utility models. She also represents
clients in matters related to trademarks and
industrial designs before the Polish Patent
Office and EUIPO.
Name: Małgorzata Cichosz, LLM
Law Firm Name: Sigeon IP Grzelak & Partners,
Patent Attorneys and Attorneys-at-Law
Country: Poland
Position: Of counsel
Website: www.sigeon.pl
With many years of legal consulting
experience, Małgorzata is an attorney-atlaw,
highly qualified legal practitioner,
and intellectual property expert. She
advises on all legal aspects related
to intellectual property, particularly
copyrights and derivative rights,
industrial property rights, data
protection, protection of business
secrets and know-how, and protection
of image and personal rights. She has
experience in combating practices that
have the hallmarks of unfair competition,
including unfair advertisement and
protection of marks and appearance of
products.
Małgorzata also provides legal support
for investors, companies, scientific
institutions, and individual inventors
Anna also participates in court proceedings
before the Polish Patent Office and civil
courts in patent invalidation or infringement
cases. She is a frequent speaker at
conferences and seminars. She represents
domestic and international clients,
including universities, research and scientific
institutes, global corporations, and SMEs, in
matters relating to the protection of their
intellectual property rights. Anna aids in the
development of IP, technology transfer, and
commercialisation of intellectual property
rights allowing expansion of technology on
domestic and foreign markets.
Anna is a member of PIRP- Polish Chamber
of Patent Attorneys, EPI - European Patent
Institute, and an active member of INTA and
AIPPI.
relating to the management, transfer,
and commercialisation of intellectual and
industrial property rights and innovative IP
solutions. She specialises in the protection
of intellectual and industrial property,
in particular in building IP protection
strategies. Małgorzata also represents
Clients before common and administrative
courts, administrative authorities, and
other entities and proceedings before
enforcement authorities in proceedings
regarding infringements of IP and unfair
competition.
Małgorzata is a professional representative
before EUIPO, a member of the Warsaw Bar
Association, and an active member of AIPPI -
International Association for the Protection
of Intellectual Property
Name: Anna Grzelak, PhD
Law Firm Name: Sigeon IP Grzelak & Partners,
Patent Attorneys and Attorneys-at-Law
Country: Poland
Position: Managing Partner
Website: www.sigeon.pl
Grzelak & Partners
Sigeon IP Grzelak & Partners, Patent Attorneys and Attorneys-at-Law provides a comprehensive range of services
related to obtaining and maintaining industrial and intellectual property rights, legal and business advisory as well as in
litigation. We combine our patent attorneys’ experience with exceptional legal, IP management and commercialisation
expertise to provide our Clients with the “one-stop-shop” professional services in all matters related to IP.
Grzelak & Partners
34
35

Name: Dilek Zeybel
Law Firm Name: Orbis IP & Law
Country: Turkey
Position: Managing Partner
Website: www.orbisiplaw.com
Dilek is one of the Managing Partners
of Orbis IP & Law and is a chartered
trademark & patent attorney. She is
mainly responsible for clients in foreign
countries in all areas of obtaining and
enforcing IP rights. Born in Germany,
she visited a Catholic and famous Jewish
high school. She graduated with a firstclass
degree from the University of
Siegen with a B.A. in Literacy Cultural
and Media Studies in Germany. During
her university life, Dilek worked for one
of Germany’s most popular public service
television broadcasters WDR and several
other media organisations.
Her focus is mainly the foreign clientele
consultancy and IP portfolio management
of more extensive portfolios. She is also a
registered sworn translator and interpreter
of notaries in the Turkish Republic. Her
main practice area is to manage large IP
portfolios, and she leads the overseas
department. Experienced in anti-counterfeit
Aylin Şener is one of Orbis IP & Law’s
managing partners, responsible for
international clients in all areas of
obtaining and enforcing IP rights. She
leads the patent and design department
and has a strong background of technical
knowledge in patent, trademark,
industrial design, and plant breeder’s
rights and develops internal tracking
systems and internal registration
processes.
Aylin is a chartered trademark and patent
attorney in Turkey and a registered mediator
before the Turkish IP courts.
She has held numerous positions and
managed internal IP development projects
in her career and has gained a strong
technical and business background. She
started sailing into her IP career as an
industrial design expert responsible for
protecting industrial designs, enforcing
industrial design rights, and leading several
maintenance projects. Her career continued
TURKEY
and in-use searches projects, she represents
legal disputes before the Turkish Patent and
Trademark Office.
Dilek is bundling her national and
international experiences in IP Law,
which she has gained from prestigious
international clients and their projects. She
specialises in trademark and patent matters
by applying her experiences in enforcing
registered and unregistered trademark
rights across the world.
Dilek is a member of associations like
The International Trademark Association
(INTA), European Communities Trademark
Association (ECTA), German Association
for the Protection of Intellectual Property
(GRUR), Association of Intellectual Property
Experts (VPP), and The Association of
European Trademark Owners (MARQUES).
Dilek speaks Turkish, German, French, and
English very well.
Name: Aylin Şener
Law Firm Name: Orbis IP & Law
Country: Turkey
Position: Managing Partner
Website: www.orbisiplaw.com
as a Business Development Project
Manager in Purchasing and Sales with the
responsibility of organising relations with
foreign suppliers, clients, and international
patent offices.
Aylin was the leading creator of a
benchmarking & invoice management
project for her previous office to minimise
the purchasing expenses, which was a key
project within the company. Afterward, she
worked rotationally in all IP departments
as a system and process developer in order
to minimise technical, procedural, and
human-based mistakes during file tracking
processes.
She is a member of associations like The
International Trademark Association
(INTA), European Communities Trademark
Association (ECTA), and The Association of
European Trademark Owners (MARQUES).
She speaks English and Turkish very well.
TURKEY
Two women, one vision!
A Woman’s touch made the difference.
Written by, Dilek Zeybel, Managing Partner & Aylin Şener,
Managing Partner, Orbis IP & Law, Turkey - www.orbisiplaw.com
Aylin Şener and Dilek Zeybel, two fighters who made
the top 5 companies in the nation. It only took them ten years to do
this. Dilek has lived in Turkey for 15 years and moved to Turkey
after her life and study in Germany, and found herself directly in
the IP business. Aylin is actually from Bulgaria, and the office is
multilingual and multinational in Turkey and led by these women.
How do women manage to
become so successful in such a
short time and in a time when it
is not easy for women?
“It’s no secret; we just did our best
without thinking about how much
effort it would cost and how much sales
it would bring. We never gave up and
processed each case as if it were the
most important files in the world.“
“It was a hurdle that we overcame
quickly and with solidarity,” says Aylin.
“We have never had a moment in which
we were desperate although there were
enough ‘moments’”.
“We are actually two very different
characters, as different but also as
well-attuned like yin and yang,” adds
Dilek. “We had a vision of the perfect
team, and now we have an excellent
team of 30 people in the office, and
we are reflecting the interaction that
Aylin and I have in this team. The whole
team is simply a reflection of the way
we work and the vision we have for IP,”
says Dilek. “It is imperative to us that
each member has excellent knowledge
and that each member’s strengths are
well analysed, so as to use this person
well within the team. Person-oriented
management is our key because if you
value your staff, know each members’
abilities, you automatically value your
clients, and do a good job,” reports
Aylin.
What is it like as a woman to
establish an IP law firm in a
male-dominated world of
business?
“We have never had a major
disadvantage,” reports Dilek, “but
women have to work harder and prove
themselves more. It’s not a magic
formula, however women have it a little
more difficult than men, and we have
had to achieve a lot to have success, also
in our private life. I have to admit that
we were also very much supported by
women who were assistants, paralegals,
and legal staff at the beginning of our
careers in IP. They are now heads of
IP departments in large international
companies. The cohesion of women
within IP was also very supportive.
Indeed, the strength of women in IP
should not be underestimated. We
know incredibly successful women who
are really “wanted”. IP is an industry, in
contrast to other industries, in which it
is easier and clearer for women”.
What is the key formula?
“There is no specific formula,” says
Aylin. “But we always feel very close
to the client and always do our best.
If you report more to the client than
necessary, it will result in a useless flow
of information. If you tell less to the
client, the client is simply not “involved”
and will see unsatisfactory work.
Therefore, it is always essential for us to
provide precise and clear information
without leaning on the classical copypaste
work,” reports Dilek.
You recently moved.
Congratulations on your new law
firm location. We see a “Googlelike”
structure. Why did you
choose this open office design?
“It has always been our goal to be
transparent and clear about everything,
about our staff, our clients, and our
partners. We have almost no walls in
the office. The ones we have are made
of glass. This architecture symbolises
transparency. There is an incredible
flow of information in the law firm.
Your staff just always feels ready to get
back to you and always display good
teamwork. We have a bar table, so we
have the opportunity to eat together
and have a cup of coffee in a café-like
atmosphere. A table-football corner
with a PlayStation is also available and
does a really good job”, laughs Dilek,
“you can’t believe how relaxing it is for
people; after the lunch break, you see
smiling faces that are full of vigour for
the second part of the day”. “If you are
close to the staff and show that you are
always available and interested in their
motivation and mental health, things
simply run very smoothly. Only our
legal department and management
are separated by glass walls so that
we can still be reached visually. Noiseprotected
workplaces guarantee a quiet
space when someone is working on an
important case and needs absolute
silence.”
Do you have any
recommendations for IP law
firms and their management
“Stay close to the client, never lose the
thread to your staff as management,
and make sure that you always work
together without retiring to single
rooms. If you do it right, your staff will
reflect you and your vision by acting
like you”, emphasises Dilek.
36
37

TURKEY
Name: Claudia Kaya
Law Firm Name: Destek Patent
Country: Turkey
Position: Manager &
Managing IP Consultant
Website: www.destekpatent.com
YOUR IDEAS... IN GOOD HANDS.
Ms. Claudia Kaya acts as manager and
managing IP consultant for the Swiss
liaison office of the Turkish IP company
Destek Patent. She holds an MSc. in
Chemical Engineering from the Technical
University of Dortmund, as well as a
degree in interior architecture and
interior design from the Hamburger
Academy. Claudia started her career at
the University of Dortmund, working in
the department of process technology
as a research associate. Thereupon
she entered an international chemical
group dealing with know-how, trade
secrets, and licences in 36 countries all
over the globe as one of the production
managers. Before her assignment in
Switzerland, Claudia was a managing
consultant at Destek Patent in Turkey,
leveraging her experience and expertise
with global IP matters, foreign business,
and legal and social communities to
help to provide efficient IP service to a
worldwide clientele.
Her practice areas are patents, industrial
designs, and trademarks, focusing on
industries of chemical and mechanical
engineering and medical engineering,
polymer processing, life sciences, and
interior equipment.
She is an intuitive business developer who
uses creative yet critical thinking. Claudia
regards empathy and emotional intel to be
essential in the hyper-communicative world
of business. She believes strong and friendly
conversations help to build better business
relationships. She pays great respect to
client perception, speedy feedback, and
follow-ups. Peers say that she is a fast
adapter, flexible, versatile, and resourceful.
In her private world, she’s interested in
professional dancing competitions. She
has a professional dancing education and
developed several stage choreographies for
children and youngsters.
She acts in a lot of charity associations
through which she gained an award for
international understanding.
She is the mother of two sons and a
daughter and is a loving grandmother to her
two grandchildren. With her family, she likes
outdoor walking, travelling, and exploring
different cultures by finding new interesting
places all over the world.
Claudia lives in the countryside near a
big lake and the Alps where she loves to
photograph nature. She loves to stroll
through different art and archeological
exhibitions. Her favorite artworks are by
Jack Vettriano, Kadinsky, Klett, and Irene
Sheri.
Her language skills underline her
international personality. Claudia is a native
speaker of German, has close to native
speaker fluency in English and Turkish, as
well as basic to intermediate knowledge of
Italian and French.
©
®
BRAND
TRADE MARKS
DESIGNS & MODELS
TRAINING
®
PATENTS
TRADE
MARK
PATENTS
SEARCHES
SEARCHES
COPYRIGHT
DOMAIN NAMES
WEB WATCH
CUSTOM WATCH
38
INTERPATENT S.R.L.
TORINO (Italy) - Via Caboto, 35 - 10129 - Mob.: +39 011 5684450 - Fax: +39 011 5681821 - email@interpatent.com
MILANO (Italy) - Viale S. Michele del Carso, 4 - 20144 - Mob.: +39 02 67481868 - Fax: +39 02 40700339 - milano@interpatent.com
ALICANTE (Spain) - Avd. Maisonnave, 28 Bis, 4º - 03003 - Mob.: +34 965020166 - Fax: +34 965020388 - alicante@interpatent.com
www.interpatent.com

ITALY
ITALY
Name: Nicole Gorlier
Law Firm Name: INTERPATENT
Country: Italy
Position: Attorney-At-Law in the
Trademark Department
Website: www.interpatent.it
Name: Manuela Bruscolini
Law Firm Name: INTERPATENT
Country: Italy
Position: Italian & European
Trademark Attorney &
Human Resource Manager
Website: www.interpatent.it
In Interpatent since 2017, Attorney-at-
Law, Nicole, carries out her activity in the
trademark department.
Graduated in Law from the University of
Turin, she is enrolled in the Turin Bar. She
has experience in the field of intellectual
property acquired from a leading Turin law
firm specialising in the sector.
She deals with legal advice on trademarks,
patents, copyrights, counterfeiting, unfair
competition, and domain names and has
experience in the registration procedures
of Italian, EU, and international trademarks.
In addition, Nicole has acquired experience
in drafting and reviewing out-of-court and
commercial agreements and in licensing
and assignment agreements for trademarks
and patents.
Nicole’s specialism is in the protection
of the trademark from the initial phase:
carrying out searches for anteriority, filing
and prosecution both in Italy and abroad;
surveillance activities; trademark defence
at national, EU, international and foreign
national level; consultancy in the context of
opposition procedures to the registration
of trademarks, at Italian, EU and foreign
national level; drafting warnings, opinions
and replies on counterfeiting, unfair
competition and trademark validity.
Nicole speaks Italian, English and French.
She is a member of the Young Practitioners’
Committee of INTA.
Manuela has been working in the
International Trademark Department
since 2001 and has recently acquired the
role of Human Resource manager.
She is an Italian and European trademark and
design attorney. Before moving to Torino,
Manuela worked as a conference interpreter
and translator for a primary law firm in
Milan specialising in Industrial Property.
She is a competent professional in the field
of trademarks before the Italian Patent and
Trademark Office (UIBM). Manuela advises
Italian and foreign companies on filing
strategies, trademark prosecution, and
opposition procedures before the Italian
Trademark Office, EUIPO, and WIPO and
manages recordal procedures in connection
with IP ownership transfer and licenses.
She has been a speaker at conferences
on trademarks and domain names and
collaborated with the Order of Industrial
Property Consultants for the codification of
the Decisions of the Appeal Commissions
regarding trademarks.
Manuela speaks languages: Italian, English,
German and French.
Manuela is a member of INTA, MARQUES,
and PTMG.
Name: Simona Mantovani
Law Firm Name: INTERPATENT
Country: Italy
Position: Italian & European
Trademark Attorney
Website: www.interpatent.it
Name: Maria Cristina Goicoechea
Margalef
Law Firm Name: INTERPATENT
Country: Italy
Position: Italian & European
Trademark Attorney
Website: www.interpatent.it
Simona graduated from the Law School
of the University of Turin and is an Italian
and European Trademark Attorney.
She joined INTERPATENT in 2018 after
having gained experience in other IP firms
in Turin. Simona is a competent professional
representative in the field of trademarks,
designs and models before the European
Union Intellectual Property Office (EUIPO).
She now also works in the International
Trademark Department and advises Italian
and foreign companies on filing strategies,
trademark prosecution, and opposition
procedures before the Italian Trademark
Office, and WIPO.
Simona registered in the trademark section
of the Italian Register of Industrial Property
Consultants. She graduated in Law at
the University of Turin with a thesis on
industrial law entitled “I brand di forma”, she
collaborated for some years with a leading
consulting firm where she deepened her
knowledge of the intellectual property
sector.
She assists Italian and foreign clients
in procedures for filing and obtaining
trademarks in Italy and Europe, in the
International Register and abroad, in
carrying out prior art searches, in opposition
procedures to the registration of trademarks
and procedures for the transcription of
intellectual property rights.
Simona speaks Italian, English and French.
Simona is a member of INTA.
Maria Cristina has a degree in Law from
the Universidad Pontificia Comillas
(ICADE) in Madrid. She is an Italian
and European trademark and design
attorney.
Before Maria Cristina joined Interpatent in
2014, she had worked in various Industrial
Property Law Firms in Spain and Italy,
where she gained experience in trademarks,
patents, and design prosecution and
enforcement. Now she is in the Trademark
Department and advises on IP matters to
local and foreign clients, most of them from
Spanish-speaking countries.
Maria Cristina is a professional representative
with competence in the field of trademarks,
designs and models before the European
Union Intellectual Property Office (EUIPO).
She has dealt with legal advice relating
to trademarks, patents, copyrights,
counterfeiting, unfair competition, domain
names and has experience of Spanish, Italian,
EU and international trademark registration
procedures of Administrative Litigation
before the Tribunal Superior de Justicia
of Madrid and also in the intervention
procedures of the customs authorities in
relation to counterfeit goods.
Maria Cristina was a lecturer in the Masters
“Human Resources Management” and
“Marketing and Communication” at the C
Management Business School in Rome and
recently collaborated in the drafting of the
Civil Law Treaty by Paolo Cendon, Giuffrè
Editore.
She is a member of the ADR Committee of
INTA.
Maria Cristina speaks Spanish, Italian and
English.
40 41

As we all know, submitting evidence
of the use of a trademark may not
be that easy: at times, clients are not
able to provide any evidence material
in support of the use or are not aware
of what specific documents can be
essential to demonstrate genuine
use; in other cases, they simply need
to be pointed in the right course
in order to collect the required
documentation. Furthermore, it is
not uncommon that clients believe
in good faith that their trademark is
well known and extensively used in
the relevant territory, assuming they
are in possession of a considerable
amount of evidence when instead,
this cannot be held true. This is to
say that sometimes clients have a
misguided perception of what having
enough evidence to show use means.
Navigating the web
Given the current and predictable future
growth of online trading and marketing,
the web has become an unlimited source of
evidence. As a matter of fact, more than ever
in recent years, and during this particular
year, 2020, owners, suppliers, distributors,
intermediaries, and customers have found
their “virtual meeting point” on the web.
That’s why, in order to assist their clients,
IP consultants often find themselves also
playing the role of the IT expert. Indeed,
it is not infrequent for them to need to
enlighten their clients on the best way to
find online proof of use, or even, in some
cases, to be the ones to directly explore the
web or social media in search of evidence
material.
When searching for online evidence, both
IP attorneys and clients may nonetheless
encounter adversities. The web may seem
one of the most immediate and efficient
places to collect and research data and
information. The question is: provided that
online evidence is considered a valid means
of proof, which precautions must be taken
to render the evidence extracted from the
Internet strong and indisputable for the
client’s purpose?
ITALY
When IP Consultants
become IT Consultants:
the struggling and never-ending
search for online evidence.
Authored by Nicole Gorlier, Simona Mantovani, Maria Cristina Goicoechea
Margalef and Manuela Bruscolini at INTERPATENT, Italy - www.interpatent.it
- An Italian perspective
in the light of current EU harmonisation developments
in assessing the relevance and use of reliable
certification tools in the trademark field.
Online Evidence –
is it reliable?
The EUIPO will address this issue in a new
Common Practice concerning evidence
in trademark appeal proceedings (CP12).
Only a preliminary draft is available at the
moment, as the document is still open to
discussion. In supplying general principles
on types, means sources, and identification
of relevant data, the Common Practice will
provide recommendations and criteria for
assessing the veracity, reliability, and the
genuineness of online evidence, in order for
it to be acceptable.
This is due to the fact that “the nature of the
internet can make it difficult to establish the
actual content available on the internet and
the date or period of time this content was
made available to the public. Websites are
indeed easily updated, and most of them
do not provide any archive of previously
displayed material, nor do they display
records that enable members of the public
to establish precisely what was published
and when. Therefore, the problem of the
‘reliability’ of online evidence arises” [page
15 of the CP12 Common Practice].
Consequently, these are the questions that
come into mind: WHAT is or was published,
WHEN the content was uploaded and made
available to the public, WHO uploaded it
and WHERE, meaning the specific website,
platform, app, or network.
What is reliable
online evidence?
First, let’s clarify that online evidence should
be understood as evidence extracted from
the Internet. Examples could be website
archives, editable or non-editable websites,
social media platforms, e-commerce
platforms, apps, hyperlinks, URL addresses,
and video and photo sharing websites.
All these contents may be considered
reliable online evidence if corroborated by
other data that prove the intensity, nature,
relevance, and genuineness of the use of
the trademark.
In order to retrieve said additional
information, the main suggestion offered
by the above-mentioned Common Practice
is to carry out a “website analytics report”
on the interested page/platform containing
at least the date range, the total number
and territorial location of users, the average
session duration and bounce rate and
eventual subpages.
We can all agree that recovering said report
may be challenging – since it consists of a
technical process carried out by specialised
professionals - however, our aim is to at least
shed light on which kind of data may be
directly obtainable from the client – or its IP
consultants - in order to serve the purpose
of proving genuine use of its trademark.
Bearing in mind that clients usually provide
samples of their website, their social media,
and their online sales, here are a few tips to
strengthen said content.
The screenshot of the client’s company
website – not sufficient per se - should be
corroborated by additional information,
such as the number of visits to the site, the
emails received via the site, and the business
volume generated.
In addition, some websites also have an
app version – for example, if the client sells
goods online or provides services through
the app -; if so, screenshots of the app (from
the computer if possible) are admitted
but should be backed by other data such
as information on the app and the date of
publication of the captured content.
As of today, social media, more than ever,
reflects and shows how popular and well
known a client or its trademark is. However,
for extracts from social media (such as
screenshots or printouts) to be considered
as a source of evidence, the following
data should be shown: date of creation (or
modification) of the account, number of
followers, a clear image of the trademark,
the date of publication of the specific
content, the URL address. Moreover, the socalled
“popularity indicators” play their part
in strengthening the value of the evidence:
these can be intended as the number of
people reached (and their geographical
origin, gender, age, if pertinent), of views, of
clicks for the post/s, of reactions/comments/
shares, of followers, of likes and tags and
hashtags.
E-commerce platforms are another modern
tool to market one’s products and, at
the same time, make oneself known by
the consumer and by potential virtual
customers. They too could be considered
as a source of evidence, provided that they
are endorsed by other data such as the date/
relevant period of time, the name and code
of the product, the first date of sale, possible
reviews posted by users after the purchase
of the product.
In Italy
Regarding Italy, a recent decision issued
by the Italian PTO seems to have fully
embraced this approach, and the criteria set
out by the above cited Common Practice,
particularly with regards to e-commerce
platforms. Indeed, the Office did not
accept the mere printout of an Amazon
page and of a Debenhams page bearing
the trademark of the Opponent (to whom
the request of proof of use of its trademark
was addressed) given that the same was
not validated by evidence showing that
the website had been visited and also that
orders had effectively been placed through
the websites for the products bearing
the trademark during the relevant period
[Decision of August 8th, 2019 on oppositions
No. 370/2016 (652016000088223) and
399/2016 (652016000088709) – Pineapple
Holdings Limited & Apple Inc vs. Pineapple
Snc di Matteo Lavaggi & C.].
One of the most potent messages of this
decision – and in general of the EU Common
Practice - is the key role played by the
relevant date, which is of crucial importance
in the matter of online evidence and proof
of use of a trademark.
Once again, though, the assessment of said
information may be complex. This is due to
the fact that not all websites show the date
or indicate the time in which the content
was created or uploaded. Nonetheless,
IP consultants can rely on specific tools
that come to the rescue, such as search
engines and website archiving services
(that assess the date of publication of a
content), computer-generated timestamps,
forensic software tools rather than notary
certificates.
With regards to forensic software tools,
that’s when IP attorneys come into play as
IT consultants.
As to our own experience at INTERPATENT,
indeed, we personally have found this
means of evidence very useful and have had
the chance to experiment it with matters
involving our clients. In fact, we availed
ourselves of a specific forensic acquisition
of website software designed to certificate
web pages.
In the Italian practice, said software
applications are counted among the various
and valid tools - recognised by forensic
communities around the world – used by
law enforcement agencies, investigators,
notaries, lawyers, and technical consultants,
who are in need of acquiring web pages
to be presented in judicial or non-judicial
proceedings.
Unlike other solutions, this type of program
can also acquire certified pages protected
by credentials, such as Facebook, photo
galleries, chats, and restricted areas.
The goal of said software is to prove that
the researched page was present online
on a specific date and at a specific time
by capturing the content and images
contained on the certified website.
The program provides the user with
screenshots of the website – photographing
its content at that precise moment in time
- while also creating a so called “acquisition
document” which contains the indication of
the detected URL and the date and time of
acquisition of the relevant page.
In our experience, said tool has proven to be
a possible solution to the above identified
issues encountered in searching for and
providing online evidence: it both crystalises
the content of the page but also equips the
user with that necessary corroborating data
Offices require for proving genuine use of a
trademark.
Moreover, additional new online tools
are being developed, such as the recently
introduced WIPO PROOF, a new digital
business service made available by WIPO
that provides a date- and time-stamped
digital fingerprint of any file, proving its
existence at a specific point in time.
The search for online evidence is still
a slippery slope, but we may expect
the creation of additional tools that
will come to our aid in order to face
this challenge made even more
difficult by the ever-changing nature
of the web itself.
42 43

SWITZERLAND
CHINA
Name: Ursula In-Albon
Law Firm Name: Troller Hitz Troller
Country: Switzerland
Position: Partner
Website: www.trollerlaw.ch
Ursula In-Albon has been on the team
of Troller Hitz Troller since 1999 and
became a partner in 2003. She has been
an active practitioner in the IP field for
over twenty years. In addition, Ursula
served as a judge on the Federal Board of
Appeals for Intellectual Property.
Over the years, and as the only lady
partner, she has embraced challenges
and hard work to guarantee success.
She is currently heading the Bern office,
and together with a team of qualified
professionals, they provide a highquality
service.
Her primary professional field of activity
practice areas is intellectual property law
and unfair competition law, advertising
law, and domain-name law. She represents
parties before courts and state authorities.
One focus of her work is on advising brand
owners on the development of trademark
and domain name strategies. Furthermore,
she deals routinely with licensing matters
and contract law.
Ursula is a member of the International
Trademark Association (INTA), the European
Communities Trademark Association (ECTA),
the European Association of Brand Owners
(MARQUES), the International Association
for the Protection of Intellectual Property
(AIPPI), the Institut für gewerblichen
Rechtsschutz (INGRES), the Swiss Association
of Judges in Commercial Matters (SVHR), the
German Association for Industrial Property
and Copyright (GRUR), the Bernese and Swiss
Bar Associations. Further, she belongs to IR
Global, the largest international professional
service network, where she represents
Switzerland in the field of intellectual
property as an exclusive member.
Troller Hitz Troller has continuously been
ranked by Chambers Europe, World
Trademark Review (WTR), and Legal
500, where Ursula has been ranked as
one of the leading individuals. She has
also continuously been named in Best
Lawyers for Antitrust/Competition Law and
Intellectual Property Law.
Outside work Ursula likes spending time
with her family and her friends. Also, she is
an enthusiastic skier, and during the winter
season, she enjoys whizzing down the
slopes. Playing her cello is one of her further
leisure activities and once started reading a
thriller, she can hardly put the book away.
44
45

NETHERLANDS
NETHERLANDS
Name: Diana Versteeg
Law Firm Name: Anchor IP
Country: the Netherlands
Position: Owner/Founder
Website: www.anchor-ip.com
The World of IP
& Why I Love My Job.
Written by Diana Versteeg, Founder of Anchor IP, the Netherlands
www.anchor-ip.com
“You are the unlikeliest lawyer I have ever
met, and you should be proud of that.”
Diana takes pride in this feedback from
a client, indeed. She is also proud of her
clients. Entrepreneurs, working tirelessly
to impact their industry positively. Her
passion for IP started in law school in the
Netherlands (including a year in Paris).
Diana graduated in IP law and European
competition law. Her thesis was about
“The European design law in relation to
spare parts in the automotive industry”.
Since she graduated 24 years ago, Diana
worked as a trademark agent, in-house
counsel, private practitioner, teacher, and
public speaker. She is one of the few IP
lawyers in the Netherlands who is also a
trademark agent.
In 2020, Diana started IP boutique firm
Anchor IP. Services include IP prosecution,
exploitation, enforcement, management
of IP portfolios, negotiating and drafting
IP contracts, IP litigation, administrative
proceedings, and IP advice in international
M&A projects.
Diana provided training to many RD&I, sales,
and marketing teams in the field of soft IP
rights, IP contracts, and trade secrets. She
was also in the lead of complex “technical IP”
agreements (e.g., consortium agreements,
joint development agreements), working
closely with patent attorneys, research
institutes, and universities.
Diana lectured many years about
International Trademarks at the postdoctorate
training for Benelux trademark
attorneys. Currently, she is one of the
Examiners.
In 2019, she also taught at Mr. S.K. Martens
Academie, a specialised IP training for IP
lawyers, and in 2021, Diana will teach at the
University of Utrecht.
Diana actively contributes to the wider IP
community. A highlight was to be elected
Chair of MARQUES, the European association
representing brand owners, in 2013.
She represented MARQUES as a permanent
Observer at the Management Board
and Budget Committee meetings of the
European Intellectual Property Office
(EUIPO). She also took part in meetings at the
European Commission to discuss the reform
of the European Trademark legislation and
Brexit.
Other highlights were to speak at the
European Parliament (at the EU Agencies
Forum), and at conferences organised by
the World Intellectual Property Organisation
(WIPO) in Cameroon on the Singapore Treaty
on the Law of Trademarks, and in Azerbaijan
about Non-traditional Trademarks.
She has also spoken about anti-counterfeit,
the EU trademark reform, IP and innovation
in Europe, Brexit, and Alternative Dispute
Resolution.
In 2018 and 2019, Diana was listed in WTR’s
World’s Leading Corporate Trademark
Professionals.
This year, Diana joined EUIPO’s initiative
to offer pro bono IP services to SMEs in
Europe. She deems it important to support
SMEs, now perhaps more than ever, as,
in these times of crisis and technological
developments, many businesses have to
re-invent their business model. Diana helps
businesses navigate the area of IP law and
establish a solid legal foundation for their
intellectual assets so that they can build
value for themselves and their customers.
The Anchor IP logo combines her passion for
IP law and sailing. Diana lives in the Hague,
close to the sea, together with her husband
and daughter.
• Do we need to expand trademark protection now that our products are
manufactured in another country?
• They need a loan; however, the investor wants due diligence to see what kind of IP
they own.
• This new name is already owned by someone else, what to do?
• We found this nice picture online and decided to use it in all our brochures.
• My business partner received this letter from a lawyer about the products we sell
in our webshop.
• We have this idea about tiny houses, and different universities are interested.
How do we proceed?
• Their domain name includes our trademark, and it confuses ome of our clients.
• Why should I register a trademark? We are already registered with the Chamber of
Commerce.
• We paid for the development of our brand identity, so we own it, right?
• How can we protect our company’s trade secrets?
These are just a few examples of the many different questions I receive from clients. I
love my job; however, the variety in the questions and the difference in clients never
ceases to amaze me.
Businesses, big or small, striving to make their products and services nicer, faster,
prettier, tastier, affordable, more effective, more impactful, easier to use. Simply better.
The backbone of our economy. The creators of art, music, theatre, entertainment, and so
much more. All supported by Intellectual Property (IP).
Creation and innovation have been around since people started to think. It is in our
nature to want to improve everything around us. This will never stop. It is such a special
area of the law. For decades now, IP law has been challenged continuously by its playing
field. With the current 4th Industrial Revolution and the somewhat disruptive Artificial
Intelligence, the developments are hard to keep up with. Critics say that some IP rights
will not survive.
On the contrary, I would say. Only a fair system of IP rights will help societies maintain
a balance between the innovators and the public interest. Between the intrinsic human
desire to create and the equally intrinsic human need for incentives.
IP continues to be relevant for everyone who is affected by or uses products or services.
Regardless of whether one is at the offering or demanding side.
The CEO of a toy manufacturing company could very well be the mother of children
who like to play with toys. She is both offering and consuming products. The successful
business coach could be someone with back pain, in need of medication made by
another company. The inventor of a new machine could buy perfume for her mother’s
birthday. We all take art classes, and we visit museums, we exercise, we cook, we shop,
we travel, we volunteer, we work in our gardens, we teach, we learn.
IP is there when we wake up, throughout our day and when we go to sleep. A world
without IP would be grey and dull. No choices, no creativity, no colour, no nothing.
For businesses, it is what makes them unique and interesting and perhaps a potential
investment or joint development partner. Studies show that companies who embrace IP
rights show more profit and growth. This is particularly true for SMEs.
These are challenging times, though. A crisis like Covid-19 affects many businesses.
Companies must adapt or re-invent their
business model altogether. Businesses
fighting to survive may have less budget
for the effective enforcement of their
IP rights, which clashes with the evergrowing
market of counterfeit goods.
Managing more extensive IP portfolios
is nowadays a lot about pruning or rebranding.
Having multiple brands for
similar products in different countries
becomes less and less attractive.
The challenges are not just posed by
4IR or Covid19. The demand side is also
rapidly changing. Consumers today have
a totally different approach to the way
they search, test, compare, review, and
purchase their products and services. They
want to know the origin of products and
whether the production process was fair
regarding human rights, environmentalfriendly,
and inclusive. More and more,
companies are expected to align with the
UN’s Sustainable Development Goals. It
can take many years to build a reputation
for a brand, but it could be jeopardised
in a split second if the criticism is not
responded to or if complaints are not
handled well. Social media is unforgiving,
as everyone is a reporter with a camera
nowadays. In the near future, everyone
will probably also be a producer with the
help of 3D printing.
These are crazy but also exciting times. A
crisis may also lead to more opportunities
to collaborate with others, either to join
forces or to supplement and strengthen
each other’s expertise. Nobody knows
what the future will bring. But I am
convinced that IP rights continue to be
instrumental for companies, to protect
them and help them build a valuable
business.
Again, I love my job. It is an absolute
joy and privilege to be part of the IP
community, together with all the other
fantastic women (and men) working in IP.
46 47

UNITED CHINA KINGDOM
Name: Lisa Lovell
Company Name:
Brand Enforcement UK LTD
Country: United Kingdom
Position: CEO
Website: www.brandenforcement.co.uk
IP industry services
PROFILES
&
ARTICLES
Sponsored by
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 anticounterfeiting
service provider with
experience in all aspects of both the
criminal and civil enforcement of intellectual
property rights (IPR).
CEO of BEUK, Lisa runs various international
test purchase programmes for many of
the world’s leading brands, spanning
across many industries including fashion,
electronics, printer consumables,
e-cigarettes, medical devices, eyewear, and
fragrances.
Lisa provides her clients with law
enforcement liaison support in the UK,
gathers evidence by conducting test
purchases of physical goods and acts as a
product expert for many of her brand owner
clients.
Once the evidence has been examined
and determined as counterfeit, Lisa then
produces the relevant expert and continuity
witness statements where required. She
then engages with the relevant Trading
Standards (TS) authorities and offers further
support in gathering further physical
evidence and/or intelligence as to the supply
of the counterfeit goods.
With 20 years’ experience in the British Army,
Lisa was a member of the Royal Military
Police and did an operational tour of Iraq
in 2004 (Op Telic). A trained Military Diver,
Lisa participated in Operation Cockney
triangle, a diving expedition in the Bermuda
Triangle. Lisa has also participated in the
British Army Skiing Championships and has
conducted many different exercises in many
different countries, including two Exchange
Programmes in both Indiana and Michigan
in the USA.
Due to the experience gained in her military
career, Lisa also conducts investigations
on counterfeit targets, including not only
the individuals behind it, any Company
information, and details of any addresses
the business is operating from. If Trading
Standards decide to bring a prosecution
on behalf of the client, Lisa supports them
with whatever they need in order to achieve
this. If Trading Standards decide not to bring
a criminal prosecution, we then work with
the brand to establish a different course of
action which may include a private criminal
prosecution or civil enforcement.
Lisa also attends raids on behalf of her brand
owner clients and also training events where
Customs, police and Trading Standards
Officers are provided with examples of
product, both counterfeit and genuine and
are hopefully then enabled to conduct their
own product identification on the ground.
48
49

Championing
Gender Diversity
Innovation is a word fundamentally
associated with intellectual property.
It’s a word associated with our
daily work at Patent Seekers, from
Prior Art searches to Clearance
requests and everything in-between.
It should be a word inherently
linked to gender diversity. It is
apparent we are witnessing a new
innovative workforce alongside a
changing employment landscape,
with new ideas, novel concepts,
diversity, and equal opportunities
being introduced into a previously
established conservative working
environment.
From the plight of the suffragettes
and improved employment and antidiscrimination
laws to the rising awareness
of the importance and celebration of gender
diversity, equality in the workplace has
never been more accessible, at least so on
paper. So, we ask, is this a transition we are
beginning to see?
Written by Clare Gibson, Patent Analysis at Patent Seekers, UK
www.patentseekers.com
Author Bio - Clare Gibson
has been a Patent Analyst at Patent Seekers since 2017. She has a
degree in Physics from Cardiff University, which she achieved after
looking for a change of direction in her career. Clare works on the
Physics and Mechanical team, carrying out a wide variety of searches
for companies worldwide. In this article, she discusses what gender
diversity means to her.
Looking to this year’s Fortune 500
companies, a record 37 females currently
hold CEO positions [1], which is an increase
of 4 from 2019 [2]. Even more encouraging,
some of these females held CEO positions
are within innovative scientific and
technological companies.
However, this diversity achievement within
the Fortune 500, in actuality, equates to only
7.4% of females held CEO positions. When
we look only slightly behind this record year
for female CEOs, it highlights a substantially
large gender gap. We must ask, is this the
case within one specific list of companies, or
is this reality true across all areas?
UNITED CHINA KINGDOM
for Innovation
With this in mind, how does
gender diversity look in IP?
The World Intellectual Property
Organisation (WIPO) released statistics in
2019, which revealed that less than one
fifth, 18.7% to be exact, of inventors named
in PCT applications, were women. Again,
an increase from years prior, indicating a
closing of the gender gap, yet as suggested
by WIPO, these statistics infer parity will only
be reached in 2044 [3].
To assist with the acceleration of parity,
WIPO actively promotes gender equality
with programs and activities dedicated
to female participation [4]. One such
noted project aptly named “Increasing
the Role of Women in Innovation and
Entrepreneurship” identifies and aims to
highlight the impediments women face
within entrepreneurship and innovation.
Such impediments identified by WIPO
pinpoint a lack of support and a lack of
access to investors for female inventors. It
is also noted that women only networks
typically have fewer members, hence
a correlation to fewer members with
patenting experience, which inevitably
leads to such lack of support.
The IP Inclusive organisation have also
identified similar issues to WIPO. They have
created a solution to provide support and
networking opportunities for women in
the IP community, specifically focussing on
issues affecting women in the IP professions.
They host a series of events yearly, ranging
from formal panel discussions to informal
social events. Even though the goal is to
provide further support, information, and
opportunities for women, it is open to all
genders.
Such identification of genderrelated
systematic issues is
also addressed globally.
The Institute of Physics (IOP) states that
only approximately 20% of females study
physics at A-Level. The IOP addresses the
gender imbalance in physics with a series of
programmes and research trials, aiming to
increase the proportion of females opting
for A-Level Physics [5]. Gender diversity
STEM subject promotion within education
settings seeks to bridge the gender gap,
yet arguably more needs to be done to
encourage women at an earlier stage, for
example, primary and secondary school
age. There has long been a debate about
nature versus nurture regarding the paths
people take in life, and maybe this could
be addressed at a younger age. Interest
within STEM subjects could be nurtured
from an earlier age to stimulate interest
and nurture passion within a primary and
secondary educational setting. After all,
it is at such ages where minds are shaped
and possibilities of what is achievable as an
adult are addressed. We could assist such
minds in becoming the next generation of
scientists, engineers, and innovators, and IP
Inclusive is tackling this very issue. Recently
IP Inclusive advertised their resources as
part of the Careers in IP week with the aim
to increase diversity in the profession [6].
With diversity trying to be addressed at a
core education level, female participation
is increasingly being encouraged within
STEM subjects. As part of this address,
insights into possible career options are laid
out, such as green technology, research,
industry, technology, engineering, and
coding. Ideally, the proposed results of
this promotion of gender diversity will
naturally translate into these currently male
dominated fields. Such promotion actually
played a role in my opting for a STEM
degree, which in turn led to a career change
into IP.
We are all aware of the importance of IP
protection in business. It encourages and
rewards innovation. IP can become a large
asset portfolio to businesses, with often
greater values than other assets held, such
as property. For example, IP can be sold,
licensed, and can often be used to direct
future research or innovation within such
businesses. IP areas are vast, diverse, and
change in line with the world, as seen by
the need for green technology and a rise
in research within such areas. So, it seems
reasonable as businesses and IP have
changed over the centuries, so should the
diversity within such areas.
Reflecting on my personal
experience within IP - it has been
very positive, with gender-related issues
or barriers not being an issue. In fact, I
feel so incredibly accepted within the
environment; from my first day within IP,
I can honestly state my gender has never
resulted in any form of exclusion. In relation
to the work we do at Patent Seekers, it
is interesting; it is dynamic, engaging,
and rewarding. Proudly Patent Seekers
comprises a diverse team of colleagues
and being part of such diversity. We may
all engage in opportunities to enhance
personal knowledge and to learn additional
focussed areas, which is encouraged. And
notably, career advancement is open to all,
regardless of gender, background, ethnicity,
or sexuality. Equal Opportunities within
Patent Seekers are inherent, and this can be
seen across the company.
My role is as a patent analyst within the
physics and mechanical team. As with all
analysts at Patent Seekers, we conduct
searches, analyse results, and outline
relevant documents within a report to our
clients, where each search can be tailored
to a client’s requirements. We understand
a topic, we apply our skills, we ensure a
high standard of quality throughout. There
is no division within my team, or the office
as a whole, between male and female
skillsets. Women are treated equally; work is
assigned based on degree knowledge and
streamlined to be tailored to an individual’s
area of expertise. There is no discrimination
between genders—all of which I find
incredibly encouraging, especially when we
consider diversity.
Whilst my experience has been positive,
we must recognise that diversity issues
remain globally, especially gender diversity,
where a stubborn glass ceiling persists.
We read ever-emerging stories of gender
discrimination, the gender pay gap, the
inability for women to progress or even
to feel equal to their male counterparts.
Despite the encouraging points made in
previous paragraphs, the figures show there
is still a long way to go for equality between
genders on a global scale.
We can only hope that if we share our stories
and advocate our innovation, those other
women may feel they too can be accepted
into IP, along with any other sectors or
profession they choose, and not have to face
the gender inequalities of the past and/or
present. Whilst I appreciate my experience
may not be the norm for some women,
just look at the notorious example of lead
female film actors who reportedly earn less
than their male counterparts while playing
equally leading roles within the same movie.
We must hope to accelerate change, stop
stereotyping, and contribute wherever
possible, even if that is as small as sharing
a positive experience or by showcasing
our achievements so that every woman
who enters any workforce feels as equally
treated as some of us already are.
Gone should be the archaic days where roles
were typically assigned based on gender;
astronauts used to be male only, bank tellers
were thought of as females’ roles. Whilst we
must acknowledge that there are differences
between genders, the antiquated
ideologies, and pigeonholing associated
therewith must become a thing of the past.
It is routinely argued that different genders
bring differing aspects and points of view
to the workplace, which is undoubtedly
beneficial for all. Women can introduce
diversity into management styles, with the
argument of bringing more empathy than
a male counterpart to certain scenarios [7],
women can introduce different perspectives
and alternative problem-solving skills. All
can be debated. Of course, we must not
be guilty of stereotyping or dismiss our
male counterparts; for example, there are
male managers who display outstanding
empathy. The key factor we are hoping
to acknowledge is that the more gender
diversity within the workplace, the more
balanced discussions, ideas, and concepts
are brought to the table by a diverse
representation. And this must surely result
in achieving a fuller, more rounded overview
within the workplace and subsequently our
daily lives.
Women bring innovation and creativity
to the table. We are showcasing our
capabilities, and we are positively shaping
the landscape of the workplace. We
celebrate globally International Women’s
Day. Change takes time, and we hope for
rapid progression in relation to increasing
gender diverse job growth. Until gender
equality is sufficiently apparent, I and Patent
Seekers shall continue to be a champion of
gender diversity becoming the norm.
[1] https://fortune.com/2020/05/18/women-ceos-fortune-500-2020/
[2] https://fortune.com/2019/05/16/fortune-500-female-ceos/
[3] https://www.wipo.int/women-and-ip/en/news/2020/
news_0001.html
[4] https://www.wipo.int/women-and-ip/en/news/2020/
news_0001.html
[5] https://www.iop.org/what-were-doing-address-genderimbalance-physics#gref
[6] https://ipinclusive.org.uk/newsandfeatures/new-careers-inideas-schools-outreach-resources/
[7] https://good.co/blog/female-managers-traits/
50
51

Specialist global search services for patent attorneys,
universities, technology companies and SMEs
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
www.patentseekers.com
52 53

ZIMBABWE
CHINA
Africa
Name: Brenda Matanga
Law Firm Name:
BMatanga IP Attorneys
Country: Zimbabwe
Position:
Head of Practice & Lead IP Counsel
Website: www.bmatanga.com
Brenda Matanga is the head of the
practice and Lead IP Counsel. She holds
a Bachelor of Law Honours Degree
(LLB) from the University of Zimbabwe
and a Masters in Intellectual Property
Law (LLM) from the University of Turin
(Italy) in collaboration with the World
Intellectual Property Organisation
(WIPO). She has extensive experience
in commercial practice and has, over
the years, distinguished herself as an
intellectual property law specialist
Attorney. Brenda has advised and
assisted global companies in IP
prosecution, strategy, and dispute
resolution. As a leading IP champion in
Zimbabwe and Africa at large, she has
helped shape the industry’s growth
and actively empowers start-ups with
dedicated IP services.
Through her distinguished status as a
former President of the Zimbabwe Institute
of Patents and Trademarks Agents (ZIPTA)
and current role as Chairperson of the Africa
Regional Intellectual Property Organisation
(ARIPO) Working Group (which is amending
the organisation’s legal instruments),
Brenda is in the front line of advocating and
spearheading necessary legislative reforms
in IP laws in Zimbabwe and the continent at
large.
She is currently Councillor of the Law Society
of Zimbabwe, which is the governing body
for the legal profession in Zimbabwe. Miss
Matanga is a member of the International
Trademarks Association (INTA), where she
has served as a committee member for the
“Unreal Campaign” and currently serves in
the Brands for a Better Society committee.
Brenda is an alumnus of the University of
Turin, the IP Global Exchange (Europe), and
is also part of the steering committee of
the World IP Forum. Having established
herself as a leading and reliable IP voice in
the region, international recognition for her
contributions in the sector has followed.
Among other eminent accolades Miss
Matanga has attained, the following are
to be found:
• Intellectual Property Law
Firm of the Year in Zimbabwe:
2016-Corporate
• International Global Awards 2016
• Most Influential Woman in IP
2018-Zimbabwe
• Top 50 Emerging IP Players Award
2019-The IPR Gorilla
• Listed by Courtroom Mail as one
of the 30 most influential female
Law Firm founders (2020)
Sponsored by
54
55

ZIMBABWE
CHINA
Guardians of the
Knowledge Economy
Written by Brenda Matanga, Principal, BMatanga Intellectual Property Services,
Zimbabwe - www.bmatanga.com
Ideas. Priceless gemstones of our
era unleashed from the depths of
curious minds by industrious beings.
BMatanga IP Attorneys came to life in
2010 as a fortress that protects ideas
in every form and function. Ideas
are the bedrock for wealth creation
and advancement of societies when
developed, protected, and sustained.
Just as title deeds are the keys unlocking
ownership of brick and mortar buildings,
so are patents, trademarks, industrial
designs, and copyright for intangible
assets to creators.
The rise of the internet as an information
exchange means that ideas transcend
barriers like time, distance, and physical
borders. Whilst this has led to the
unprecedented distribution of information,
traditions, and creative works, it has also
created a battlefield that Intellectual
Property lawyers and lawmakers are needed
to navigate. Information has become
profoundly sharable and prone to copying
and duplication, leading to a gulf between
creators and consumers. How can ideas be
safeguarded in the quest to extract value
from them? BMatanga IP Attorneys was
created to answer this question.
Happy Birthday to You, Us & an Incredible
Story
Happy birthday to you
Happy birthday to you
Happy birthday dear [NAME]
Happy birthday to you.
A transformed world demands evolved
thinking and implementation. For example,
did you know that the common “happy
birthday to you” song likely recited on your
special day as we are now reciting it on ours
was copyrighted until recently? Oh yes, a
song as common and free flowing as oxygen
was the exclusive property of Warner/
Chapell music, generating a cool US$ 5000
a day in 2008. That is US$ 2 million for the
year for a song made up of 4 repetitive
lines! No public performance of the song
or commercial usage such as movies could
contain its lyrics without payment of US$
700 to the copyright holder.
As the story above illustrates, ideas are
powerful engines of opportunity that are
able to create jobs and economic prosperity
for individuals, enterprises, and nations.
Such stories justify our existence in Africa.
Our role is to address this inequality by
defending, protecting, and ensuring that
anyone who seeks to innovate a product
or a solution to life derives full value and
remuneration of their sweat of the brow.
Raise Your Champagne Glass!
Let’s celebrate!
Milestones such as our 10th anniversary
should not be celebrated without fine
Champagne, right? Well, it actually depends.
The Intellectual Property zeal in us will have
you know that Champagne is a territorial
mark for bubbly that is only produced in
the French region of Champagne. This is
according to the Comité Champagne, the
trade association that represents all the
grape growers and houses of Champagne,
France. Champagne is a unique product
born of the shared heritage of Wine Growers
and Champagne Houses, for whom the
defence of the Champagne name is vital.
That is because only wines made from the
grapes grown and harvested in Champagne
and then produced under the strict
regulations of the Champagne appellation
can bear the Champagne name.
The story of Champagne illustrates how
highly competitive the markets of today
are. Often when a product is successful,
competitors will attempt to make similar
or identical products. There are vultures
out there, waiting to pounce on these
unsuspecting creators and reap profits
where they did not expend a dime in
creativity or labor. Without incurring
research and development costs, they sell
the product or service at a lower price and
sometimes even at equally competitive
prices with the original creations. This not
only eats into the innovators’ profits; it
reduces their market share and threatens
livelihoods.
Hakuna Matata: IP FOR AFRICA
First released in 1994, the Lion King is a
hit cinematographic production from the
American Disney company. Set in Africa,
it tells the tale of a young Lion’s journey to
royalty. The movie’s most famous line is,
without a doubt, Hakuna Matata – Swahili
for “no worries”. Since 2003, the term
exists as a trademark owned by the Mega
Corporation. This fact had Kenyans and
other speakers of Africa’s biggest language
protesting. What some viewed as an affront
and hyper commercialisation is to us an
illustration of how nascent the intellectual
property field is in Africa.
Often, little to no knowledge about
intellectual property and the rights afforded
to creators or the benefits for enterprises
exists, thereby robbing the continent of
billions of dollars in lost intellectual and
monetary value. Ours is a consumptive
continent endowed with substantial natural
resources which are shipped out of Africa
for value addition then sold back in glitzy
packaging. It goes without saying that
an enormous continent of a billion rising
inhabitants needs to safeguard its wealth.
Conversely, global brand custodians need
to protect their intellectual property on
this rapidly growing continent. We have
observed that trying to juggle across 54
countries can be a nightmare for one who is
not rooted in that territory.
Africa is our home, and we understand its
people, business culture, and territory
better; hence we have intentionally
positioned ourselves to serve the world
from Africa.
15 Downie Avenue
Belgravia
Harare, Zimbabwe
+263 (242) 791 296
Patent & Trademark Agents
56
info@bmatanga.com
www.bmatanga.com
IP Attorneys
57

NIGERIA CHINA
NIGERIA CHINA
Name: Uwa Ohiku
Law Firm Name: Jackson, Etti & Edu
Country: Nigeria
Position: Partner & Head of IP Practice
Website: www.jacksonettiandedu.com
Name: Nneoma Emeruem Azuike
Law Firm Name: Stillwaters Law Firm
Country: Nigeria
Position: Associate
Website: www.stillwaterslaw.com
Uwa is a Partner and Head of the Firm’s
multiple award-winning Intellectual
Property (IP) Practice. She has specialist
experience in all aspects of IP Law &
Practice and oversees all services rendered
by the Team. Uwa is the first Nigerian
WIPO Domain Names Panelist. She sat
on possibly the largest Domain Name
dispute involving a well-known cable news
provider, under the US National Arbitration
Forum. Consistently nominated as a
leading practitioner by Who’s Who Legal,
the 2015 and 2020 editions described her
as ‘a brilliant tactician’ and ‘well versed at
handling complex IP matters’.
The only Nigerian recognised in the maiden
edition of Managing Intellectual Property’s
Top 250 Women in IP (2018), she again made
the list in 2019 and 2020, respectively. Uwa
was also recognised as one of the Influential
Women in IP by the World IP Review, 2020;
recognised as a Band 1 IP lawyer in the
Chambers Global Guide, 2020; recognised
as one of Nigeria’s top female legal
professionals by Experts Guide to Women
in Business Law 2020 and recognised as
one of Nigeria’s 50 Most Influential Women
in Law by Business Day, the most respected
business periodical.
She has led the IP Team of Jackson, Etti & Edu
to win practically every IP-related Award,
internationally and locally, the latest being
the winner of the MIP Nigeria Firm of The
Year 2020 and Finalist for Africa Firm of the
Year 2020.
She is the go-to person for complex matters.
She enjoys working with clients as well as
mentoring a team of competent, tech-savvy,
and reliable IP experts.
PRACTICE AREAS
• IP Consulting, Training & Strategy
Formulation
• Portfolio Advisory, Registration, and
Management
• Mergers & Acquisitions
• Domain Name Advisory, Registration &
Adjudication
• IP Audit & Valuation
• IP Risk Management; Contentious IP
• Commercial IP Advisory
• Legal & Regulatory Advisory Services
PROFESSIONAL MEMBERSHIPS
• International Bar Association (IBA) (IP &
Entertainment Law)
• Nigerian Bar Association (NBA)
• IP Law Association of Nigeria (IPLAN)
• IP Committee Section on Business Law
(SBL)
• International Trademark Association (INTA)
• INTA Anti-Counterfeiting Committee
(2002-2004) and INTA Bulletin Committee
(2005-2007)
• Chairperson, Panel on Review of Nigerian
Draft Trademarks Act (2002)
• Institute of Trademark Agents (ITMA)
(Overseas Member)
• Asia- Pacific Lawyers Association (APLA)
Uwa is a creative writer with several
published and unpublished works, some
of which are Help! I think I Have OCD!; My
Lockdown Memoirs; After Lockdown, What
Next?; Jealousy & Envy – Twin Destructive
Emotions. She loves mentoring & coaching
the younger generation, using her personal
and professional journeys as storyboards.
She is a great cook, a keen gardener who
grows her vegetables and also makes her
own dresses. Uwa is a painter, artist, winner of
1st Prize in a National Essay competition and
1st Prize in a State Essay competition whilst
in school. Speaker at many professional and
non-professional events, she was an Editor
of the Sickle Cell Magazine and involved in
Junior Achievement of Nigeria, facilitating
many of their primary schools’ programs.
She has recently set up an NGO to address
and help indigent youths suffering from
Sickle Cell blood disorder.
Nneoma is a quick-witted professional
with a good understanding of Intellectual
Property law, Dispute Resolution, and
Litigation. She started her practise in
2018 with Stillwaters Law Firm, one of
Nigeria’s leading intellectual property
firms.
She is one of the significantly few female
legal practitioners in Nigeria that has shown
great interest in the field of Intellectual
Property and has, over time, developed
herself by acquiring expertise through
practice and learning. As a young IP lawyer,
Nneoma is passionate and committed
to developing and spreading massive
sensitisation on intellectual property rights
in Nigeria. She concentrates primarily on
Small, Medium-scale Enterprises (SME’s) by
helping them understand what Intellectual
Property rights are, how it can be protected,
and how they can effectively harness them
for economic benefits.
This she is achieving by working with the
team in Stillwaters Law Firm to partner with
organisations interested in promoting and
protecting intellectual property rights in
Nigeria.
Stillwaters is a law firm based in Nigeria.
The firm was established in 2001 and
specialises in corporate and commercial law,
intellectual property (IP) law, tax advisory
services, Media-Entertainment-Technology
and Sports (METS), and Litigation/Dispute
Resolution.
As a firm, we believe that many aspects
of today’s legal landscape require a keen
understanding as well as knowledge of the
law. Accordingly, we offer solutions to the
often complex arrays of regulations and
requirements that confront the business
client in Nigeria, thereby creating conducive
legal environments for our clients to achieve
their goals.
Professionalism, flexibility, and innovation
are the hallmark of our practice. We value
professional excellence, outstanding result,
and realise they both require creativity and
hard work. With over 125 years of combined
partnership practice experience, we strive
to gain every legal advantage for our clients
while upholding the principles behind our
guiding goal of PEOPLE, INTEGRITY, and
SERVICE as a driving force steering our entire
practice.
Our IP department operates from the
commercial cities of Lagos and Abuja in
Nigeria, with associate offices in Cameroon
(for OAPI matters) and Angola, and our
dispute resolution department has extensive
practice before the trial and appellate courts
in Nigeria.
58 59

NIGERIA CHINA
COMMERCIALISATION OF IP IN WEST AFRICA,
CHALLENGES, AND RECOMMENDATIONS GEARED TOWARDS
Encouraging innovation
Written by Nneoma Emeruem Azuike, Associate at Stillwaters,
Nigeria - www.stillwaterslaw.com
One of the major reasons for the protection of Intellectual
Property (IP) is the need for an innovator/creator to be able to
adequately harness the economic benefits embedded in their
innovations or creativity through commercialisation. This
article seeks to highlight some of the challenges to effective IP
commercialisation in West Africa and how best to overcome them.
accelerating the enforcement of rights of
the creators when infringed or creating
incentives for innovation. The private sector
in these countries has not made any clear
move to help creators or inventors (Copyright
excluded) in the commercialisation of their
creations or inventions. This makes it difficult
for the government of these countries to
adequately harness IP commercialisation for
technological advancement, human capital
development, job creation, and revenue
generation, which are all good reasons for
the supervising bodies of the countries in the
West African region and the private sector to
look into the commercialisation of IP.
Challenges of IP
commercialisation
in West Africa
i. Lack of Awareness: This is the major
challenge of IP commercialisation in West
Africa as not many people are sensitised
on what IP rights are, their moral or
economic value, how it can be protected,
nor how it can be harnessed. In Nigeria,
for example, although gradual efforts
are being made especially by some law
firms in the country to create awareness
of what IP is, they have not been able to
adequately cover enough grounds as
most people are yet to understand the
importance of IP to their business and life
in general. Here, most local businesses
are Small and Medium Scale Enterprises
(SME’s). A large percentage of them do
not know what a Trademark is nor how
it can negatively or positively affect their
business.
ii. Non-Availability of IP
management: IP management is
the ability to manage an IP portfolio
effectively; this can be achieved by
having managers who are experts in
the field of IP help the creator screen
his creations and weigh their economic
value. In West Africa, where most of
its local businesses are SMEs, most
creators cannot
afford IP managers, and the supervising
authorities in most of its countries have
not made any effort to provide means of
mitigating this challenge.
iii. The commercial potential of
creation or invention: some of the
creations or inventions made by creators
or inventors if commercialised might
not yield enough revenue to cover up
the cost of commercialisation or profits
made from it. There are no modalities set
in motion in the region geared towards
assisting in further developing these
creations or inventions to make them
commercially viable.
iv. Lack of entrepreneurial skills to
take a new creation/invention to
market through start-ups or SME’s:
this challenge is caused by the lack of
interest of the supervising authorities
of West African countries to ensure the
development of the entrepreneurial skills
for its citizens. Most of what some of
these entrepreneurs know, they learned
on their own or through the help of
a few firms from the private sector
and international organisations.
Considering the technological
handicap in Africa, many
entrepreneurs have not been
reached by these organisations,
nor can they learn effectively on
their own due to lack of facilities.
What is IP
commercialisation?
According to Wikipedia, commercialisation
is the process of introducing a new product
or production method into commerce,
making it available on the market. IP
Commercialisation simply means the
conversion of inventions/creations (in
this case called intangible assets) into a
viable market product, service, or process.
Economic values can be created from IP
rights through Practicing or exclusivity,
Licensing, Franchise, Assignment, etc.
When effectively utilised, these values will
generate maximum economic benefits
to a creator, thereby acting as a sufficient
incentive for innovations, which will help
boost the economy in the applicable
environment.
Need for IP
commercialisation
in West Africa.
In countries and regions such as Germany,
South Korea, Israel, India, China, the United
States of America, Japan, etc., substantial
revenues are generated through the
effective utilisation of IP rights. These
countries understand the importance of
creative minds and have, over the years,
taken clear steps in encouraging R&D arising
from such. Adequate legislation is put in
place, and the enforcement mechanism
is enhanced on a time-sensitive basis to
encourage investments. The provisions of
these enabling environments by relevant
authorities attract private sector business,
thereby creating a competitive edge
within the IP polity. The fallout cannot be
overemphasised. For example, in India,
there are accelerators, incubators, and
other entities available to guide a creator or
inventor on the commercialisation of his/her
creations or inventions.
On the other hand, West African countries
have not been able to fully tap into the
potential of IP commercialisation and
the positive effect it will have on their
economy. This is caused by a lack of
sufficient sensitisation of the populace on
the need for IP creation, protection, and the
inherent commercial benefit embedded
in IP. Resources for R&D are near lacking,
albeit there is a greater advancement in the
copyright realm related to music, literary
works, artistic creation, and cinematography.
At their very best, most of these endeavors
lack a major commercial perspective, which
in turn dilutes their value and
degrades their potentials.
The supervising authorities also
play a significant part in these
adversities. They are unable to
effectively diversify their revenue
generation streams by shifting their
attention from tangible assets (for example,
crude oil) to intangible
assets, which are
innovations. Most
of the creators/
inventors in these
countries are
unaware of their IP
rights or how it can
be protected and
effectively utilised,
thus causing a
lack of interest
in innovation
and reducing the
speed of technological
advancements. Apart from
legislation, the supervising
authorities in these countries
have made no tangible effort
to encourage innovation
and guarantee adequate
protection through, for example,
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v. Lack of help from supervising
authorities to help harness and
develop the creativity of the
people: In Africa as a whole, it is majorly
in countries like South Africa, Kenya, etc.,
that you see their governments seriously
make efforts geared towards harnessing
and encouraging the commercialisation
of IP. For example, South Africa had set
up an innovation fund to assist in the
development and commercialisation of
IP by both individuals and universities.
Recommendations
a. Adequate sensitisation on IP, it’s
rights, protections, and benefits should
be created through the teaching of IP in
schools and community halls, creating
incentives that promote innovations,
and holding seminars for entrepreneurs
teaching them the importance of IP and
how it can be commercialised effectively.
b. A startup or SME might not be able
to afford the services of an IP manager.
To mitigate this challenge, supervising
authorities of West African countries
should set up an organisation where
these creators or inventors can access
IP experts at subsidised and affordable
rates. This will help grow the economy
and encourage innovation.
c. Governments of countries in the region
and the private sector can make available
grants, create Research and Development
centers where creators or inventors can,
with the help of other creators or experts,
improve on their innovations and make it
commercially viable if such invention or
creation is seen to have potential.
d. Modalities should be set up where
entrepreneurs can acquire skills to
grow and commercialise their IP can
be created by establishing starting free
periodic seminars and inviting experts
to speak to them; also, avenues should
be created on how to reach and teach
those entrepreneurs in remote areas of
the country.
e. The government of West African
countries can help by setting up
innovation funds, which will be used
to help commercialise a creation or
invention. They should also encourage
Research and Development(R&D) in West
African universities by providing grants
and facilitating IP commercialisation.
f. To effectively commercialise IP, the
supervising authorities should ensure
that workable modalities are put in
place to guarantee adequate and rapid
enforcement of IP rights of the creators or
inventors in the region.
Conclusion
West Africa is the region in Africa that houses
the most populous country in Africa, which
is also Africa’s largest economy-Nigeria.
It is expected that a lot has been done in
the area of IP and its commercialisation.
Still, the reverse is the case as most of the
registrations on IP done in these countries
are done by international companies. Due to
lack of awareness, most SME owners do not
know what a trademark is nor see the need
to register it. This lack of sensitisation is the
major challenge in the region that has given
rise to a lack of innovation as there exists no
motivation nor incentive to innovate.
I am of the firm belief that once modalities
are put in place by government and private
sectors to ensure that awareness of IP is
made and its commercialisation, West Africa
as a region will be a hub of innovation.
Its countries will be able to advance
technologically and otherwise and be at
par with other countries of the world. Also,
both the private sector and the economy
of the countries will benefit from it as great
innovation increases revenue generation
and human capital development.
Asia
Sponsored by
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64
PROTECTION ACCREDITED TO WELL
KNOWN MARKS BY THE IP ACT
Marks inadmissible by reason of third-party
rights are provided for in Section 104 (1)
and Section 104 (1) (d) particularly denies
the registration of marks considering wellknown
marks and trade names.
Section 104(1) (d)
“The Director-General shall not register a
mark if it is identical with, or misleadingly
similar to, or constitutes a translation or
transliteration or transcription of a mark
or trade name which is well known in Sri
Lanka for identical or similar goods or
services of a third party, or such mark or
trade name is well known and registered
in Sri Lanka for goods or services which
are not identical or similar to these in
respect of which registration is applied
for, provided in the latter case the use of the
mark in relation to those goods or services
would indicate a connection between
those goods or services and the owner of
the well known mark and that the interests
of the owner of the well known mark are
likely to be damaged by such use.”
The section refers to two circumstances:
the use of the propounded mark in relation
to identical or similar goods or services
and different goods or services.
It is important to note that where the
propounded mark is identical with, or
misleadingly similar to or constitutes a
translation or transliteration or transcription
of a well-known mark or trade name for
identical or similar goods or services, the
fact that whether such a well-known mark
or trade name is registered in Sri Lanka or
not is immaterial.
In that, where such a well-known mark or
trade name is registered in Sri Lanka for
goods or services which are not identical or
similar to that of the propounded mark, the
propounded mark is generally admissible. It
will not be admissible only in the following
circumstances;
a. the use of the propounded mark in
relation to those goods or services would
indicate a connection between those
goods or services and the owner of the
well-known mark
b. the interests of the owner of the wellknown
mark is likely to be damaged by
such use.
It is also important to note that as per the
wording of 104 (1) (d), well-known registered
trade names concerning different goods
or services are protected even when the
required circumstances do not exist.
USE OF WELL-KNOWN MARKS IN SRI
LANKA
Section 104 (1) (d) is silent about the use of
the concerned well-known mark or trade
name in Sri Lanka. Hence, the interest of
the proprietors of the well-known mark or
trade name are protected irrespective of
the use of such a well-known mark or trade
name in Sri Lanka.
HOW TO DETERMINE WHETHER A MARK
IS WELL-KNOWN OR NOT
SRI LANKA
Protection of
WELL-KNOWN TRADEMARKS in Sri Lanka
Written by Anomi Wanigasekera, Partner at Julius & Creasy, Sri Lanka
www.juliusandcreasy.com
Overview
The primary legislation governing trademarks in Sri Lanka is the Intellectual Property Act, No.
36 of 2003 (IP Act). Sri Lanka is a signatory to the Paris Convention for the Protection of Industrial
Property (Paris Convention) and the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS Agreement); two multilateral treaties wherein the special protection of famous
and well-known marks are recognised. The exclusive right to a mark can be acquired through
a registration obtained under the IP Act. However, under Section 104(1) (d) of the IP Act, special
rights and protections are afforded to owners of well- known and famous marks. Section 104(1)
(d) of the IP Act prohibits the registration of marks if they are identical or misleadingly similar
to, or constitute a translation, transliteration, or transcription of third-party marks for identical
or similar goods or services. In this instance, it is immaterial whether the well-known mark is
registered in Sri Lanka.
Section 104(2) spells out certain criteria
for the purpose of determining whether a
mark is well-Known or not, and these are
deemed not to be exclusive or exhaustive.
i) particular facts and circumstances
relating to each mark;
(ii) any fact or circumstance from which
it may be inferred that the mark is wellknown;
(iii) the degree of knowledge or recognition
of the mark of the relevant sector of the
public;
(iv) the duration, extent, and geographical
area of use of the mark;
(v) the duration, extent, and geographical
area of promotion of the mark, including
advertising or publicity and the
presentation at any fair or exhibition of
the goods or services to which the mark
applies;
(vi) the duration and geographical area
of the registration or the application for
registration, of the mark, to the extent that
they reflect use or recognition of the mark;
(vii) the record of successful enforcement of
rights in the mark, in particular, the extent
to which the mark has been recognised
as being well known, by the Competent
Authority;
(viii) the value associated with the mark;
Well-known marks whether registered or
not are protected under the provisions of
the IP Act. If not registered, rights can be
enforced under unfair competition.
Manisha Singh is a founder and the
Managing Partner of LexOrbis. She
overviews and supervises all practice
groups at the firm. Starting her career
at the time when Indian IP laws and
practices were undergoing substantial
changes pursuant to India’s obligations
to comply with the TRIPS agreement,
Manisha played an important and crucial
role in advising and apprising Indian
policy and lawmakers on global standards
associated with IP administrative and
enforcement systems.
Manisha is known and respected for her deep
expertise in prosecution and enforcement
of all forms of IP rights and for strategising
and managing global patents, trademarks,
and designs portfolios of large global and
domestic companies. Her keen interest in
using and deploying the latest technology
tools and processes has immensely helped
the firm develop efficient IP service delivery
models and provide best-in-the-class
services. She is also known for her sharp
litigation and negotiation skills for both IP
and non-IP litigations and dispute resolution.
She is involved in a large number of
intellectual property litigations with a focus
Name: Amaya Singh
Law Firm Name: LexOrbis
Country: India
INDIA
Position: Partner
Website: www.lexorbis.com
Amaya is a Partner at LexOrbis. With
over 17 years of experience in the field of
Trademarks, she has acquired expertise in
all nuances of the trademark laws, ranging
from national and international filings,
prosecution, assignments, recordals,
renewals, oppositions, and cancellation
actions. She regularly advises clients on
allied areas of trademark enforcement,
such as brand protection and domain
name acquisition.
Amaya also regularly advises clients ranging
from start-ups and small and medium
Name: Manisha Singh
Law Firm Name: LexOrbis
Country: India
on patent litigations covering all technical
fields – particularly pharmaceuticals,
telecommunications, and mechanics. She
has been involved in and successfully
resolved various trademarks, copyright,
design infringement, and passing off cases
in the shortest possible time and the most
cost-efficient manner applying out-of-box
strategies and thinking.
She is an active member of many associations
like INTA, APAA, AIPLA, AIPPI, LES, FICPI, and
is actively involved in their committee work.
She is an active writer and regularly authors
articles and commentaries for some of the
top IP publications.
Awards:
- ALB Top Dispute Lawyers, 2020: Manisha
Singh recognised as one of the top dispute
lawyers
- India Business Law Journal, 2020: Manisha
Singh recognised as one of India’s Top 100
Lawyers, The A-List
-IAM Strategy 300, 2020- Manisha Singh has
been recognised as the world’s leading IP
strategist
scale enterprises in identifying and
protecting their IP assets in India as well as
internationally and is responsible for large IP
portfolios from various industries, including
Media & Entertainment, Pharmaceuticals,
Foods and Beverages, Computer Software,
Fashion, Sports, Automobiles, Liquor, etc.
She regularly represents LexOrbis in several
national and international IP conferences
and events throughout the year.
In addition, Amaya is also in charge of
the Group for Research, Publications, and
Programs at LexOrbis and Heads the Firm’s
overall operations.
Position: Managing Partner
Website: www.lexorbis.com
-IAM 1000, 2020- Manisha Singh is
recognised as a “Recommended Individual”
- Managing IP, 2020- Manisha Singh
recognised as “IP Star” 2020 for Patent
litigation, Patent strategy & counselling
-Manisha Singh recognised as Star Women
in law for the year by Legal Era-Legal Media
Group, 2020
-WTR 1000, 2020 - Manisha Singh ranked
among the “Recommended Individuals.”
65

The main plaintiff, RB Health (US) LLC, is
a British multinational consumer goods
company which sued the defendant
along with its Indian counterpart and
the second plaintiff, Reckitt Benckiser
(India) Pvt Ltd. Also known by the Reckitt
Benckiser Group, the company is a
worldwide producer of health, hygiene,
and household products including some
well-known brands like ‘Dettol’, ‘Harpic’,
‘Lizol’, etc. The company owns and uses a
set of design registrations for its various
products, of which the ones relevant in
this case are the design registrations for
soap bars bearing numbers 229435 and
229436, falling in class 28-02, obtained
on 21.05.2010 (with a priority date of
23.11.2009), and 24.04.2015, respectively.
The impugned soap bar design bears the
registration number 271671 and has a
reciprocity date of 04.11.2014 in class 28-
02.
The defendant, Dabur India Limited, is one
of the biggest Indian manufacturers of
Ayurvedic and natural healthcare goods. As
per the plaintiffs’ case, the cause of action
arose when the defendant introduced a
soap bar under the brand name ‘Sanitize’ on
30.07.2020, bearing a similar trade dress to
that of the plaintiffs’ product.
The issue:
The plaintiffs alleged piracy, infringement
and passing off of the plaintiffs’ registered
design by the defendants. They stated that
upon comparison, it would show that the
defendant’s product is a fake imitation of
the plaintiffs’ product.
To substantiate their claims against
the defendant, the plaintiffs stated the
following information in their written plaint:
that they have been selling the antiseptic
liquid soap under the brand name Dettol
since 1933. They began using the ‘sword
device’ in the trade dress from 1999-2000 in
India and started using an ‘overlapping soap
sign’ from 2010. The taglines ‘be 100% sure’,
‘everyday protection against a wide range
of unseen germs’, and ‘protection from 100
illness-causing germs’, have been in use
since 2003, 2010, and 2014, respectively.
INDIA
Soap Wars:
Dabur Gets Interim Relief
Written by Manisha Singh, Managing Partner & Amaya Singh,
Partner at LexOrbis, India - www.lexorbis.com
The background:
Recently, the Delhi High Court decided an intellectual property
infringement suit between two consumer goods manufacturers, RB
Health (US) LLC and Dabur India Limited. The plaintiffs moved the
court to enforce their intellectual property rights vested collectively in
a design registration, a tagline, and the trade dress of their soap bars.
The plaintiffs sought a permanent
injunction against the defendant from
manufacturing, importing, marketing,
advertising, promoting, selling and/or using
the plaintiffs’ impugned design registration
bearing number 271671 in class 28-02.
The injunction was also sought to bar the
defendant from using any combination of
the plaintiffs’ registered design with any
other design. Furthermore, an injunction
was sought to protect the tagline ‘be 100%
sure’ used in the advertisements for the
soap bar along with the packaging, and
the colour of the product. The plaintiffs
also sought to obtain all the material in
the defendant’s possession which bore
the impugned design and a rendition of
accounts.
The defendant denied copying the plaintiffs’
designs by stating that their registered
design is not unique or distinguishable
from other similar designs available in
the market, hence, they could not claim
exclusive ownership over it. They submitted
that the plaintiffs’ taglines do not describe
the product and cannot be protected under
the IP law as it contains a disclaimer.
It is pertinent to note here that during an
initial hearing on 14.08.2020, the court
questioned whether similar designs for the
same product already existed in the market.
To this, the defendant submitted two
design registrations owned by a competitor,
Hindustan Unilever Limited (HUL), bearing
design registration numbers 233189 and
233190 in the year 2010 in class 28-02 which
resembled the impugned designs. At that
time, the court directed the Controller of
Designs to present the documents related
to these design registrations, including any
applications moved by any of the parties on
that behalf.
The plaintiffs’
contentions:
Firstly, the plaintiffs repudiated the claims of
the defendant by stating that the plaintiffs’
registered design cannot be invalidated
only because it has features which are
common with the 2009 design. Since both
the plaintiffs belong to a common parent
company i.e. the Reckitt Benckiser Group,
they hold a valid common ownership title
over the registered designs.
Further, the defendant relied on HUL’s
design registrations to prove that the
impugned designs already existed in the
market. The plaintiffs stated that this is
futile by citing that the plaintiffs were the
first registered proprietors of the designs.
Moreover, HUL’s design registration only
states the colour and colour combination
used on their products.
The plaintiffs further stated that any other
registration of the impugned design made
outside India before 2009 will also not help
the defendant’s case because neither is it
an available ground for cancellation under
the Indian Designs Act nor do those design
registrations constitute prior publication.
The defendant failed to submit any
evidence in support of their claim. They
also submitted that those designs were not
similar to the designs disputed in this case.
The plaintiffs submitted that the defendant
had tried to pass off their product as the
plaintiffs’. It was evident from looking at
the defendant’s product which had such
features that were exclusively associated
with the plaintiffs’ product like the
combination of green and white colour,
display of same taglines, sword device,
overlapping plus sign on the packaging,
and the similar smell, colour, shape and
configuration of the product. This in turn
established fraudulent behaviour on the
part of the defendant with a view to confuse
consumers.
The defendant’s
contentions:
While denying all claims of infringement
and passing off, the defendant reiterated
that the soap bar design is not novel and
has been in the public realm for a long
time. To substantiate, they submitted a
list of registered design numbers owned
by competitors. Hence, they claimed
protection under the ‘Gillette Defence’
doctrine as per which a defendant using
a design which is already available in the
public domain cannot be held liable for
infringement.
On this basis, they claimed that the plaintiffs’
registration of the design was invalid and
pleaded for cancellation of the registration.
To maintain the registration, the court
should apply the test of novelty to check
whether the disputed design is novel and
not a variant of earlier known designs. Also,
if the plaintiffs could prove that their design
is a variant of the design registered by them
in 2009, they could sustain the registration.
However, this would also fail given the
contention that the 2009 variant was owned
by a different juridical entity. The disputed
design in this suit cannot be protected as it
is owned by a separate entity. Therefore, the
defendant put forward that it was a mere
variant of an existing design.
The defendant stated that their packaging
bore their brand name ‘Dabur’ conspicuously
which was enough to distinguish its
products from the plaintiffs’. They further
contended that the plaintiffs cannot seek
action against passing off as they do not
have proprietary rights over the features of
the soap bar. The features in question were
the colour of the bar, the smell, colour of the
packaging, and the taglines, etc. Since the
marks or the features were descriptive, they
cannot be monopolized by the plaintiffs.
The defendant added that a registered label
does not imply rights in the descriptive
marks it contains. Upon a perusal of
the products available in the market, it
was added that the green colour of the
packaging and orange colour of the soap
bars was common hence no exclusivity or
distinctiveness could be claimed.
Competitors’ products as shown in the
Court’s order
The decision:
The court narrowed the matter to two major
issues:
1. Whether the defendant has been
successful in challenging the credibility of
the plaintiffs’ registered design?
2. Whether the defendant has attempted to
pass off their goods as those belonging to
the plaintiffs by using a similar trade dress
for the same product?
After a thorough hearing of all the
contentions, the court compared the prior
known design registrations with the parties
and the trade dress of both the parties. Upon
a perusal of the designs of competitor’s
products, the court held that the plaintiffs’
design registration could be challenged.
It was held that the design was neither
new nor novel. HUL’s design registrations
supported the defendant’s argument that
the plaintiffs’ design registrations were not
valid. Design registrations made outside
India do not nullify the designs registered
within India unless they are specifically
registered in India. An exception to this
rule is when an application on this behalf
is made within 6 months from the date of
filing the design registration application
in a foreign country which is a part of the
inter-governmental organisation. Further,
the proprietor of the impugned design
registration and the 2009 design were
different entities, namely RB Health (US)
LLC and Reckitt Benckiser (Overseas) Health
Limited, respectively, thereby weakening
the plaintiffs’ case.
Next, the court adjudged on the count of
passing off. The court held that a plaintiff
must prove reputation and goodwill in the
market; demonstrate dishonesty of the
defendant to misrepresent and confuse
customers; and that the defendant’s
fraudulent actions caused huge losses.
In this matter, the plaintiff should have
proven goodwill and reputation within the
territorial jurisdiction of the court.
As evident from the packaging and product
of the defendant, it was not proven that the
customers could be misled, or the likelihood
of confusion could arise.
The plaintiffs’ contentions that the
defendant had copied its trade dress
was debunked by the court. It held that
there were several products available in
the market which bore the same colour,
shape, and smell as that of the plaintiffs.
Likewise, the taglines and device displayed
on plaintiffs’ soap bars were not registered
trademarks. The taglines and the devices
were used commonly on soap bars and
other such household products. Over time,
they become synonymous with the class
of products and lose distinctiveness. The
plaintiffs could not prove their unique
association with the impugned design and
its features; hence, no IP rights could be
enforced over these features at this stage.
The court refused to grant an injunction in
favour of the plaintiffs and dismissed the
application. The case will be heard again in
March 2021.
In Conclusion.
The Court relied on the facts of the
case while deciding the issue. The key
takeaway from this case is that if the IP
owner does not ensure that the ownership
is with the same company/legal entity,
the rights become jeopardised. Another
takeaway from this decision is that the
existence of similar designs for the
same product in the market can make
or break a case. Even after obtaining
registration, a manufacturer should be
able to prove the novelty of its design to
successfully restrain a defendant from
using the same. In this regard, it must
be noted that competition should not be
overlooked while obtaining the design
registration. Thus, without a unique and
functional design and a clear ownership,
an IP holder cannot do much to enforce
its proprietary rights.
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67

INDIA
Name: Dr Joshita Davar Khemani
Law Firm Name: LS Davar & Co
Country: India
Position: Managing Partner
Website: www.lsdavar.org.in
How Dr. Joshita Davar Khemani
Revolutionised the Indian IP Industry with
Her Leadership.
Dr Joshita Davar Khemani is the current
Managing Partner and senior Attorney
at Law at L.S. DAVAR & CO., a full-service
Intellectual Property Law Firm which was
established and Headquartered in Kolkata
in the year 1932 by Late Mr. L. S. Davar, an
Attorney at Law.
Skilled in Client relationships, Litigation,
Management, Intellectual Property, and
Trademarks, Dr. Joshita Davar Khemani
has dominated the Indian legal space for
more than 30 years. With zonal offices in
Delhi and Bengaluru and associates in over
145 countries, Dr. Joshita Davar Khemani
significantly increased its legal services
wings.
Under her leadership, the firm has received
several accolades, awards, and recognition
by prestigious and globally recognised
organisations at various international
platforms. Hers is a list of proud moments as
the firm has received accolades in the Indian
IP fraternity.
• Top 100 Powerful Women in Law by
World IP Forum
• Recognised as The IP Boutiques of the
Year in the year 2020 by the Asia IP
• “IP Star - Ranked Firm” for the years
2018,2019 & 2020 by the most
prestigious IP Stars
• Recognised as The Most Trusted IP Law
Firm in the year 2018, 2019 & 2020 by
The Economic Times (ET).
• IPR Leadership Award 2020 by Social
Talks in association with NITI Aayog
• We are also members of INTA, AIPPI,
APAA, ECTA, and AIPLA.
Dr. Joshita Davar Khemani, Vice-President,
Bustee Welfare Centre, has been actively
involved in the mission of the BWC.
“Imparting free education to the
underprivileged children to make them
self-supporting happens to be one of our
primary goals,” she says proudly.
“BWC is operating with 500 students
studying from Nursery to Class VII. All
expenses like books, uniforms, and tuition
fees are borne by the organisation.”
Says Dr. Joshita Davar Khemani, the Vice-
President.
Dr. Joshita Davar Khemani’s demonstrated
leadership quality and decision-making
abilities have made this firm stand tall in the
legal space. With nearly 90 years of glorious
experience and expertise in the domain, her
legal team offers professional services in
handling, protecting, and enforcing a multifaceted
portfolio of Patents, Trademarks,
Designs, Copyrights, Domain Name, and
Geographical Indication.
Being a great place to work, several attorneys
have been with the firm for more than 25
years, and their dedication has made client
retention for more than 30 years.
Services Offered by LS DAVAR & CO
Includes the Following Sectors:
Software | IT | IOT | AI; Biotechnology;
Information Communication & Technology
(ICT); Food & Beverages; Automobile; Liquor
& Spirits; Mechanical, Electrical, Electronics
& Hydraulics in Manufacturing; Fashion &
Textile; Start-Ups ; FMCGs; Media &
Entertainment; Academic & Research
Institutes; Pharmaceuticals & Healthcare;
Indian Government Undertakings
Dr. Joshita Davar Khemani’s influence,
administrative quality & guidance has given
rise to dedicated departments and advisory
services under the following heads.
Patents, Trademarks, Designs, Copyrights,
Geographical Indications, Domain Disputes,
Annuities & Renewals, Infringement &
Counterfeit, Agreements & Licensing | IP
Audit | Due Diligence, Dispute Resolution,
Advisory Services, Bio-Diversity, Data Privacy
& Protection, Media and Entertainment Laws
Dr. Joshita Davar Khemani & her team
have been relentlessly offering top-level
legal services and helping their clients
build a strong IP portfolio & ensure a
competitive advantage.
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