Mathys and Squire Partner, Margaret Arnott, and Managing Associate, Laura West, hosted a workshop organised by the Asian Coalition Against Counterfeiting and Piracy (ACACAP) in conjunction with the Anti-Counterfeiting Group (ACG) on Thursday 5th July.
The discussion focused on: “Intelligence Led Anti-Counterfeiting Enforcement Strategies from Asia to the UK”, exploring and sharing effective ways to mitigate the risks of counterfeiting in Asia and the UK. There was also a lively debate regarding the Belt and Road initiative proposed by the Chinese Government, which is set to have a marked impact on the current enforcement strategies of many brand-owners.
The event was attended by representatives of a number of well-known brands, who are at the forefront of tackling IP infringement and counterfeiting within their businesses. The delegates heard from brand protection professionals including representatives from the ACG and ACACAP, the International Centre for Counter Terrorism and the Police Intellectual Property Crime Unit (PIPCU).
Tailored specifically to brands with manufacturing or trading interests in Asia, the workshop and debates explored effective ways of utilising the sharing of intelligence and collaboration in mitigating the risks of counterfeiting in Asia and the UK.
Laura West, event chair, noted that “the workshop brought together a fantastic range of individuals who experience first-hand the damage of counterfeiting activity here in the UK and overseas. The aim of the event was to explore recent trends in counterfeiting activity (both locally and internationally), share experiences regarding the threats that have been faced over the past year or so and to discuss possible strategies and solutions for tackling this ever-present problem. For me personally, the fantastic presentations and active debates throughout the day highlighted three key ‘take-home’ messages…”
- Counterfeiting is not a victimless crime and should be a high priority to government and law enforcement officials, particularly as there is evidence to suggest that it often delivers the funding required by criminals to pursue more serious criminal activity such as terrorism;
- Flexibility is key when undertaking a brand protection role. Counterfeiters are good at what they do and will adapt and change their modus operandi as soon as you successfully remove one of their (often numerous) sales channels;
- One of the best ways to tackle this issue on a wider scale is to effectively gather intelligence and to share this information (where possible) with other businesses and organisations such as the ACG and ACACAP who are in regular discussion with relevant stakeholders and law enforcement. A lot of evidence is not being effectively collected or, when it is collected, is not leaving the confines of that business or organisation. The sharing of this intelligence will help identify where infringers are targeting a number of different brands and therefore where an effective strategy would be to group together and share resource in tackling the individuals as well as possible links and connections that may otherwise be missed and that may help identify the source of counterfeit product.
If you are looking to protect your brand or would like to know more about trade marks in general, please email Laura West via [email protected]
Laura is a Chartered Trade Mark Attorney with experience in the filing, prosecution and enforcement of trade marks all over the world. She has a strong focus on business growth through imports, exports and global portfolio management and often works closely with Customs and Trading Standards in assisting her clients protect against counterfeit goods.
Margaret has been a trade mark specialist in private practice since 1992. She is a registered UK and European trade mark and design attorney and a member of the Institute of Trade Mark Attorneys. Margaret has considerable experience in advising a broad range of clients, including multinational corporations, in the development, management, exploitation, protection and enforcement of their trade mark portfolios.
ACACAP was founded in May 2014 and is based in Singapore with partners in over 30 Asian countries. ACACAP provides local expertise, investigations and enforcement actions to protect brands against counterfeiting and serves as a forum to discuss alternative solutions to counterfeiting and piracy.
The ACG represent the interests of: UK and international manufacturers, distributors and retailers; lawyers; trade mark agents; and brand protection specialists, campaigning to change perceptions of counterfeiting as a harmless activity and expose it as a serious organised crime.
The event was sponsored by Incopro.
Another exciting announcement from the Mathys & Squire team! David Miller and Martin MacLean, both partners and specialists in the fields of Life Sciences and Pharmaceuticals, have been nominated by their peers to feature in the 2018 edition of Who’s Who Legal: Patents.
Since 1996 Who’s Who Legal has identified the foremost legal practitioners and consulting experts in business law based upon comprehensive, independent research.
This is Martin’s third inclusion in Who’s Who Legal, having been nominated in 2016, 2017 and now 2018. He has also been ranked in the latest edition of IAM Strategy 300 – The World’s Leading IP Strategists 2017. Legal 500 (2017)
David, who has a master’s degree in natural sciences from the University of Cambridge and a master’s degree in the management of intellectual property (with distinction), from the University of London, is described in WWL as being “a seasoned expert with experience in handling examination and opposition proceedings at the highest level.”
Congratulations to both!
For more information about this, or any other people news, contact Marketing Director, Greg Birmingham on [email protected].
The N8 AgriFood Conference, hosted in Liverpool in June, brought researchers and industry together to review innovative approaches in food systems and sustainability.
Anna Gregson, Laura Clews and Dean Houston, members of the Mathys & Squire Agri-tech and Food team, attended the fascinating two-day event. A range of speakers explored hot topics within the industry, including sustainable consumer choices, new technologies in food manufacturing & processing, food waste, social innovation in food poverty and supply chain resilience. Mathys & Squire Partner, Anna Gregson, chaired a talk that considered the importance of intellectual property when innovating in the Agri-food industry.
Anna commented, “This well-attended annual event brings together stakeholders from all disciplines within the Agri-Food sector. The event discussed some fascinating and important topics regarding the critical issue of food sustainability, discussing the challenges ahead as well as offering solutions for the future. There was a real buzz about the event which brought together key players from industry and academia to exchange ideas and explore new collaborations. Mathys & Squire were proud to sponsor the event!”
Please click here for more information about our Food & Beverage team, and Agri-tech team.
Our team at N8Agrifood Conference discussing the importance of IP in food technology!
Mathys & Squire is delighted to announce two partner promotions in the firm in June.
Both Peter Arch and Craig Titmus have been promoted from Managing Associates to Partners, highlighting the firm’s ongoing commitment to career development.
Peter, who specialises in Life Sciences and Chemistry commented, “I’m very excited to have joined the partnership at such an ambitious and people focused firm, where our life sciences team continues to go from strength to strength”.
Craig, who also specialises in Life Sciences and Chemistry and is based in the firm’s Cambridge office said, “I am delighted to have joined the partnership at Mathys & Squire – it’s a real privilege and I very much look forward to contributing to the continued success of the firm”.
Mathys & Squire is dedicated to developing its people and this is yet another demonstration of our “One Firm | One Team” culture which is driven throughout our business. We wish Peter and Craig all the very best in their new roles and we know they will be immensely successful as partners.
Congratulations!
For more information about this, or any other people news, contact Marketing Director, Greg Birmingham on [email protected].
Did you take part in London Tech Week? With over 50,000 attendees, Mathys and Squire was part of the festivities!
You may have seen our team at TechXLR8, a conference celebrating and sharing the transformational impact of technology on industry and society.
As part of the conference, Managing Associate Andy White lead a panel discussion in the start-up hub Project Kairos. Panellists explored what it takes to get your operational ship in shape from R&D, tax, IP valuation and intellectual property perspectives.
Alongside TechXLR8, we also hosted an interactive panel session with Kingston Smith, exploring the path from start-up to success stories and the key intellectual property, tax and strategic insights tech entrepreneurs picked up along the way!
For any questions about the panel discussions or about protecting and commercialising your IP in IT, software, manufacturing or engineering, please contact Andy White.
The Mathys & Squire Agri-tech team visited the Cereals Show on 13th – 14th June.
Partners, James Pitchford and Craig Titmus, alongside Technical Assistants Clare Collins and Lionel Newton attended the exhibition at Chrishall Grange, which demonstrated the advances being made in agricultural technology, from crop science to autonomous vehicles.
With digging demos and a drone zone, the event showcased a variety of agri-innovation, including an ‘Innovation Insights’ lightning round, start-up pitch competition. The two-hour segment provided 30 start-ups with the chance to pitch their business to the crowd and showcase the developments and research in the field.
The showground was filled with vast ranges of crops and machinery and included demonstrations such as the Hands Free Hectare: the “future” of farming, with an autonomous combine harvesting wheat in a pre-prepared arena.
With over 20,000 farmers, agronomists and industry professionals, the team were impressed by the diversity, attention to detail and research conducted by all exhibitors and conclude it is a positive and encouraging time for the agri-community.
James commented, ‘One of the most impressive things about the Cereals show was the showground itself. Exhibitors of crops had grown plots of their plant varieties over the months running up to the show, and the displays were outstanding. Trenches had also been dug so that you could see the root structure of the crops being grown. Another show feature was the Syngenta Sprays and Sprayers Arena, in which a parade of farm machinery was displayed, with technical demonstrations taking place as well. The showcase of innovation at Cereals was exciting and we were very impressed by the diversity and the attention to detail, as well as the interest shown in intellectual property.’
For any questions or further information about protecting or commercialising your Agri-tech intellectual property, please contact James Pitchford or Craig Titmus.
A notable trend in 2017 was the increasing number of consumers turning to vegetarianism or veganism. The slaughter industry has been in the spotlight, and for some the consumption of meat has raised environmental and ethical concerns.
In a recent article, Laura Clews, Associate at Mathys & Squire, looks at the growing movement of cell-cultured meat.
Cell-cultured meat is made from a few ‘satellite’ cells, which can be taken from a muscle sample from a living animal. This breakthrough was made in 2013, and although it was a huge leap forward in science, the process was not commercially viable. The challenge now facing mFanufacturers is making the process economically viable, and Laura looks ethical and moral issues, as well as the importance of technology and intellectual property, in this area.
Click to read the article in full.
This article has since featured in New Food Magazine.
If you have any questions about the article please contact Laura Clews, or click here for more information about our Food & Beverage team.
On 13 June 2018, the UK Supreme Court handed down its long-awaited judgment in the Richemont litigation, holding that where rights holders obtain an order for internet service providers (ISPs) to implement a website-blocking order, the rights holders should indemnify the ISPs in respect of the ISPs’ reasonable costs of compliance (Cartier International AG and others (Respondents) v British Telecommunications Plc and another [2018] UKSC 28).
The Supreme Court’s judgment marks the latest and final determination in a series of decisions dating back to 2014, confirming that ISPs may be ordered by the UK Courts to implement website-blocking orders to prevent trade mark infringement.
In the first-instance proceedings, the Claimants (Cartier, Montblanc and Richemont), which design, manufacture and sell luxury goods under the well-known trade marks CARTIER, MONTBLANC, IWC (and other brands), were successful in obtaining an injunction against five of the UK’s leading ISPs (Sky, BT, EE, TalkTalk, and Virgin), requiring the ISPs to block or attempt to block access to specified websites which were advertising and selling counterfeit copies of the Claimants’ goods. This also included various other internet addresses whose purpose was to enable access to such websites. Importantly, the first-instance judge ordered the ISPs to pay the costs of the proceedings, as well as the costs for implementing the website-blocking orders.
This was a landmark decision, as it was the first time that the UK Courts had held that a website-blocking order may be used to prevent trade mark infringement, and such relief had only previously been granted by the courts in order to prevent copyright infringement.
The first-instance decision was reaffirmed in a further action between the parties, and confirmed by the Court of Appeal in 2016. Two of the five ISPs then appealed to the Supreme Court with respect to the order to pay for the costs of the proceedings and for implementing the website-blocking orders.
The Supreme Court has now unanimously confirmed that, where rights holders obtain an order that ISPs should block access to certain websites, the rights holders should indemnify the ISPs in respect of the ISPs’ costs of compliance with the order. As regards the costs of the litigation, the Supreme Court found that the judge at first-instance had been entitled to award costs against the ISPs as, somewhat unusually, the ISPs had made the litigation a test case and had strenuously resisted the application.
The Supreme Court’s decision will come as a disappointment to brand owners, as the costs of indemnifying ISPs for the costs of implementing blocking orders are likely to be high. However, the Supreme Court’s decision does not change the fact that brand owners now have at their disposal an important tool with which to tackle effectively the online sale of counterfeit goods.
Whether the Supreme Court’s latest decision will impact blocking orders sought for reasons other than the prevention of trade mark infringement remains to be seen. For example, the current case law with respect to cases involving blocking orders for the prevention of copyright infringement establishes that ISPs must pay the costs of implementation of any injunction ordered by the Courts, while rights holders bear the costs of the application. It is too early to assess whether the Supreme Court’s judgment will lead to this principle (and potentially others) being revised for copyright cases, but there is now scope for debate that a similar principle should be applied to blocking orders in respect of other intellectual property rights.
For more information about trade marks or how to protect your brand from the threat of online counterfeit sales, please contact Daniel Ramos or Margaret Arnott.
It’s the 20th World Anti-Counterfeiting Day! Established by the Global Anti-Counterfeiting Network, the day enables the organisation of local, national and regional events under the umbrella of an international campaign focussed on the problems of counterfeiting and piracy.
What is the Global Anti-Counterfeiting Group (GACG) Network?
The GACG is an international network of national and regional IP protection and enforcement organisations who aim to exchange and share best practices, information, and participate in joint activities to solve international IP enforcement challenges.
What is Counterfeiting?
- Counterfeiting is the practice of manufacturing goods and selling them under a trade mark without the trade mark owner’s permission.
- Counterfeit goods are normally of a substandard quality and can easily become faulty, thereby damaging the brand owner’s reputation.
- Due to the rise of the internet, counterfeiters can reach a wider consumer audience whilst maintaining anonymity.
- In some of the worst cases counterfeiting can help fund child labour, organised crime, money laundering and terrorism activities.
How can I prevent my products from being counterfeited?
The main prevention method many brand owners adopt is educating their consumers on how to spot a potential counterfeit product. Awareness is key in the fight against fakes and most brand owners encourage their consumers to check for the quality and consistency of a product. Many brand owners advise consumers to avoid products with prices that seem uncharacteristically low. Technology brand, Apple inc., lists the exact trade marks they have registered on their website, so that consumers can familiarise themselves with the particular fonts and terms used.
Are there any legal measures in place to prevent this?
Yes! Counterfeiting is illegal and, as such, there are a number of laws in place to help brand owners protect their products. Launched on the 12th September 2013, the UK’s first specialist police unit for intellectual property crime (known as PIPCU) often deals with cases of counterfeiting and forgery. Not only do they offer advice to consumers on avoiding forged products, they also seek to collaborate and liaise with brand owners in order to clamp down on counterfeiting in the UK. Furthermore, customs are given the authority to destroy small arrivals of counterfeit goods (up to 3 items or less than 2kg in weight) without seeking the brand owner’s permission. Although brand owners can opt out of this scheme, it can prove very useful for those who struggle to keep track of small consignments of counterfeit goods entering the country.
What should I do if someone has counterfeited my products?
While preventative methods can strongly limit forgeries, it is also important to have a set of systems in place in case counterfeit products are still being sold. We can assist you in setting up strategic solutions for tackling these issues. Having trade marks registered and recorded with local customs offices is vital in this respect. Once proven that you have a legitimate claim that your products have been counterfeited, you may be eligible to conduct raids in collaboration with local authorities and seize fake products. We can advise you in filing civil actions against those responsible.
For queries or advice about counterfeiting and protecting your brand, please contact Mathys and Squire Managing Associate, Laura West, via [email protected].
The European Commission has recently published draft proposals for the introduction of a manufacturing exemption for export purposes during the term of an SPC.
The current SPC regulations prohibit the manufacture of a product covered by an SPC for any purpose. This means that EU-based manufacturers are not able to export generics and biosimilars to non-EU countries during the SPC term, nor place generics and biosimilars on the EU market immediately following expiry of the SPC term (‘day-1’ entry).
This is believed to place EU-based manufacturers at a competitive disadvantage as compared to manufactures outside the EU.
The proposed legislation is intended to address these problems by introducing an exemption from infringement for “making [a product] for the exclusive purpose of export to third countries” and “any related act that is strictly necessary for that making or for the actual export itself” during the term of the SPC. Interestingly, the proposed legislation has not provided an exemption for manufacturing in preparation for day-1 entry and, as such, is not as wide-ranging as it could have been.
The proposals also include measures which promote transparency and safeguard SPC holders from their product being diverted onto the EU market including the setting up of a public register which holds information on manufacturers making use of the exemption, a requirement to label the exported products, and a requirement that any contractors with which a manufacturer works be made aware of the manufacturing exemption and its limitations.
The manufacturing exception will only apply to SPCs that have not yet granted, with transitional provisions applied for SPC applications already pending on the (yet to be determined) date of entry into force of the new regulations.
The European Commission hope that the exemption will provide opportunities for growth and jobs within the EU, particularly with the first generation of blockbuster biologics coming off patent in the next few years.
For queries or advice about SPCs, please contact James Wilding via [email protected]
