Monthly Archives: March 2017

Why might you choose to mediate?

During his keynote address to the Civil Mediation Conference 2015, Lord Neuberger advanced his view on the economic advantages of mediation in today’s climate: “Ever more attractive… litigation is becoming ever more expensive and time-consuming; the law is getting increasingly complex; legal aid is ever more attenuated; and, court fees are being increased markedly.” The senior judge described this as an “almost perfect storm of financial difficulties”, which risks “depriving most ordinary people of access to justice”. It was his contention that, given these circumstances, mediation represents a more than satisfactory alternative to litigation.

Speed

Indeed, in the context of corporate disputes, the English paradigm following Halsey v Milton Keynes General NHS Trust [2004] is to impose cost sanctions on parties that act unreasonably in refusing to mediate. Subsequent case law has highlighted the inherent contradiction in this policy (in Wright v Michael Wright Supplies Ltd & Anor [2013], Sir Alan Ward in the Court of Appeal commented in strong terms on the difficulties of persuading intransigent parties to mediate). That is that, to force the unwilling to mediate is a flawed premise – mediation requires willing cooperation from both parties from the beginning to work. However, from a financial perspective, even if the dispute is acrimonious, it makes sense to choose to mediate from the outset.


Source: JAMS ADR

Brexit – is this the end of pan-European patent dispute resolution?

For over 40 years, resolving European cross-border disputes about patents in one proceeding has been a dream. The solution, by way of a new European Unified Patents Court (“the UPC”), was until the summer of 2016 within touching distance. Following the Brexit vote, that vision has become more of a mirage. 

Why is this so? Many people, in business, in-house and private practice lawyers around the world and members of the European judiciary, plus civil servants, invested a huge amount of time and thought in producing a pan-European litigation system which had a good chance of working. It would not be suitable for every dispute, but it had excellent prospects of working for many. The reason is that it was a creative and practical blend of the civil law and common law systems which underlie the EU. The national civil law jurisdictions typically have no live witnesses, no cross-examination, no discovery. The national common law systems, or ones like them as in Denmark, have all of those. The genius of the UPC was to introduce fact and expert evidence, cross-examination of witnesses and limited discovery of documents in a targeted way. And to get to trial in twelve months.


Source: JAMS ADR

Guidance: Registered Designs Examination Practice

It contains sections of the Registered Designs Act 1949 (RDA) and also refers to the Registered Design Rules 2006.

The guide also includes:

  • information on absolute grounds for refusal
  • Formalities requirements for submitting a design application
  • Information on examination procedures
  • Information on the Locarno Classification system

The guide will be regularly updated to reflect changes in the Law and judicial decisions.

Note:

Practices set out in this document should be considered alongside the RDA and associated Rules. The guide should not be viewed in isolation, nor used as a substitute for legal advice.

If you notice any errors, please contact DesignsExamination@ipo.gov.uk.

Source: UK IPO News

Department of Homeland Security Releases 2016 IPR Seizure Statistics Report

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blog_031517.jpgOn January 25, 2017, the Department of Homeland Security released its Intellectual Property Rights Seizure Statistics report for fiscal year (FY) 2016. The U.S. Customs and Border Protection’s (CBP) and U.S. Immigration and Customs Enforcement (ICE)—Homeland Security Investigations (HSI) enforce intellectual property rights (IPRs) to mitigate the financial and welfare risks posed by imports of illicit products. 




In FY 2016, the number of IPR seizures increased by 9 percent from 28,865 to 31,560. The total estimated MSRP of the seized goods, had they been genuine was $1,382,903,001. The seizure report also highlights the continuation of the voluntary abandonment pilot program, which is a partnership between CBP and the Express Association of America. The pilot program was supported through formal recommendation by the Commercial Customs Operational Advisory Committee (COAC) and resulted in 3,763 voluntary abandonments of detained goods and over $3 million in estimated interdiction cost savings to the government.




Other highlights of the report include:




  • The combined total number of all IPR border enforcement actions in FY 2016 increased 11 percent over FY 2015;
  • In FY 2016, the largest category of seizures was in the apparel/accessories industry, which comprised 20 percent of the total amount of seizures, followed by consumer electronics, with 16 percent of total seizures;
  • The top two sources of counterfeit goods were China, with 52 percent, and Hong Kong, with 36 percent;
  • In FY 2016, ICE-HSI arrested 451 individuals, obtained 304 indictments, and received 272 convictions related to intellectual property crimes. 













The full report can be found here​




For more information on INTA’s anticounterfeiting activities, please contact INTA’s Anticounterfeiting Manager, Maysa Razavi (mrazavi@inta.org) or INTA’s Anticounterfeiting Coordinator, Tiffany Pho (tpho@inta.org).

Category: Counterfeiting
Published: 3/17/2017 4:31 AM
BlogTag: Counterfeit; Counterfeiting; Customs

Source: TM NEWS

Comparing arbitration and litigation costs

Reducing litigation and arbitration down to a binary assessment on cost is difficult. While it is generally now accepted that lawyers’ fees for both routes are broadly commensurate, other variables – principally, administrative costs – confuse things somewhat. Any analysis as to cost should also take into account the context of the case itself: is it complex and/or cross-jurisdictional, for example?

Nevertheless, it is possible to analyse how allocation and recoverability of costs will ultimately affect a given case’s bottom line – what a party actually spends/gets back. It is these two areas that will principally delineate the better-value option in the end.


Source: JAMS ADR

Law Students from Austria Get a Taste of Trademarks—Literally!

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On February 16, twenty-five law students from various universities across Austria were warmly welcomed at INTA’s European premises in Brussels. The study visit of this group was sponsored by the European Law Students Association (ELSA), as part of ELSA Study Visits program that brings law students from all over Europe to the heart of the European Union. 




The students were welcomed in German by Christina Sleszynska, INTA’s Chief Representative Officer – Europe. Milesh S. Gordhandas (INTA Advisor, Europe Office) briefly introduced INTA to the students before our guest speaker, Florence Verhoestraete (NautaDutilh, Belgium), took the floor and gave a lecture on the basics of trademark law. A member of the INTA Bulletins Committee—Law and Practice: Europe Subcommittee, Florence described the Association’s mission, its core values, its membership structure, and its variety of academic programs and activities. Students were keen to learn more, raising questions about how INTA can contribute to their professional development and lead to career opportunities. 




Florence then started to unpack a shopping bag filled with chocolates, biscuits, and other products to demonstrate how distinctive characteristics such as colors (e.g., MILKA’s purple) and shapes (e.g., TOBLERONE chocolates) were important from a legal perspective.




ESLA_blog2_031317.jpgWhile students sampled the MILKA, TOBLERONE, and SPECULOOS goodies, Ms. Verhoestraete described several trademark dispute cases, emphasized the importance of protecting trademarks, and explained how trademarks can become generic, using ROLLER-BLADES and ASPIRIN as examples. She went on to discuss how trademark protection can cover not only daily consumer goods (such as chocolates and tissues) but also sophisticated products in industries such as biotechnology and pharmaceuticals.




During the question-and-answer exchange, students raised many questions including how Brexit might impact trademarks, the price of registering a trademark, and cutting-edge topics on IP that could be used for a Master’s thesis. Concerning Brexit, Ms. Verhoestraete highlighted the uncertainty that currently lies upon trademarks and trademark owners, who wish to see a smooth conversion of their rights after Brexit negotiations. Regarding cutting-edge topics, Florence mentioned nontraditional marks and, more controversially, the restriction on trademark rights due to other policy concerns such as public health. 




INTA would like to thank Ms. Verhoestraete for volunteering to speak to this young and enthusiastic audience about INTA and trademark law. We look forward to welcoming new students in the near future!

If you would like to learn more about INTA’s activities in Europe, please contact Milesh Gordhandas (Advisor, Europe Office) at mgordhandas@inta.org. If you are interested in learning more about INTA’s Academic Program, contact Kensey Cybul (Coordinator, Academics) at kcybul@inta.org




Category: Europe; Academics
Published: 3/14/2017 7:05 AM
BlogTag: Europe; Academics

Source: TM NEWS

The psychology of bias: decision makers in the arbitration process

As globalisation/economic liberalisation has fuelled international arbitration’s status as the preferred adjudicatory process between corporate entities in cross-border disputes, arbitration has likewise proliferated in domestic US contracts – affecting not just corporate, but also public life. What are routine contractual clauses in the framework of corporate deals now regularly appear when one rents a car, gives birth, is fired or enters into credit agreements. In light of such proliferation and the size, scope and gravity of the matters determined, decision-maker bias in the arbitration process is a pressing concern for the arbitral community and its users.

The idea that a given arbitrator will always have either an element of inherent personal bias (affiliation bias), or have been selected so as to be favourable to one party (selection bias), becomes particularly unsettling when investor-state arbitration has empowered arbitrators to influence public policy. The power of arbitration tribunals to find states in violation of their treaty or contractual commitments, specifically evidenced in Philip Morris’ high-profile actions against Australia and Uruguay’s antismoking legislation, is a power few entities have. Insulated from judicial oversight, and unencumbered by precedent, the question of arbitrators’ biases (from both aforementioned angles) is then something that must be taken seriously.


Source: JAMS ADR

Research and analysis: UK trade mark demand: An analysis

The Intellectual Property Office (IPO) has experienced sustained and increased demand for trade marks. Working with the University of the West of England and Belmana Ltd the drivers behind this demand have been investigated.

Aspects of this research include:

  • a literature review of international work into the demand for intellectual property and trade marks
  • analysis of recent trends in trade mark activity at the IPO
  • econometric modelling of trade mark applications and renewals at the IPO

Source: UK IPO News

Italian Historical Trademarks

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On December 29, 2016, the Italian Patent and Trademark Office (IPTO) launched an initiative in connection with “historical trademarks.” The objective of this initiative is to increase the value of historical Italian trademarks and to enhance the history and merit of Italian companies.




The initiative applies to Italian trademarks still in force that are registered and that were first applied for at the IPTO before January 1, 1967, or European Union Trade Mark (EUTM) registrations that claim an Italian seniority prior to January 1, 1967.




The owners of those historical trademarks that were registered by micro, small, or medium-sized companies operating in Italy can apply (see: http://www.marchistorici.it/P42A0C2S1/Bando-Imprese.htm) beginning on April 4, 2017, to obtain financial assistance toward the relaunching and promotion of those historical trademarks. The financial assistance would cover the cost of purchasing specific and technical consulting services (e.g., marketing and communication services or consulting services) and acquiring equipment and software. The services, software, and equipment covered are limited to those applicable to the same field of goods and services claimed in the relevant historical trademark registrations. In other words, they must be useful for the relaunching of the historical trademarks. Moreover, activities conducted by the applicants must be linked to those trademarks, such as watch services, preliminary searches, and new filings at higher level (European Union Intellectual Property Office, World Intellectual Property Office, etc.).




The total allocated budget is EUR 4.5 million. Financial aid is provided in the form of grants of up to (1) a maximum of 80% of eligible costs borne by the applicant companies in purchasing specialized consulting services and (2) a maximum of 50% of the costs for purchasing equipment and software. The maximum amount of funds that any company can receive is EUR 120.000.




For further information and to apply for this special financial assistance, please visit the website here




Category: Europe
Published: 3/10/2017 6:45 AM
BlogTag: Italy

Source: TM NEWS

A Judge’s View of the Saul Lefkowitz Moot Court Competition

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This is my third year serving as an oral argument judge at the Eastern finals of INTA’s Saul Lefkowitz Moot Court Competition. Each year I feel honored to be asked to serve. For many reasons, it was, once again, a thoroughly rewarding experience.




First, serving as a moot court judge gives me an opportunity to dig into a challenging problem that raises multiple issues on the cutting edge of trademark jurisprudence. The moot court materials are always well-designed and researched. Every year, I look forward to receiving my “moot court packet” and getting ready for oral argument day.




Second, serving as a moot court judge gives me a chance to meet first-time judges and to reconnect with INTA members and staff who are returning to moot court. A great sense of camaraderie among the judges grows out of their common experience. The judges are committed to being well prepared, so that they can be both rigorous in their questioning from the bench and fair to the competing teams of law students. The INTA members and staff who run the competition are always knowledgeable and helpful.




Finally, serving as a moot court judge is a satisfying way to give back to the legal community by helping to prepare the next generation of trademark attorneys. I am always impressed with the students’ level of preparation, which is evident during oral argument. I do my best to contribute to the competition by providing my perspective, based on my current position as Senior Counsel at LeClairRyan and my years of experience in the field.




The Saul Lefkowitz Moot Court Competition is one of INTA’s great annual traditions. I have been delighted to be a small part of it for the past three years. I hope to continue serving as an oral argument judge for many years to come.







Category: Academics
Published: 3/7/2017 6:36 AM
BlogTag: Lefkowitz Competition; Academic Committee

Source: TM NEWS