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JULY 2013
Legal Focus
69 Protecting IP Rights in Emerging Markets
Continuing with our focus on the protection of IP rights in emerging markets, Lawyer Monthly takes a look at the Czech Republic by speaking to Dr. Jan Hák from PATENTSERVIS Praha, a.s.
Please introduce yourself, your firm and your role.
Our team of employees is composed prevailingly of European patent and trademark attorneys and lawyers with long-time experiences in the field of IP rights.
The words ‚Patent and Trademark Agency‘ give a true picture of our line of business, i.e. providing services with respect to Patents, Trademarks, Utility Models, Industrial Designs, Copyrights, Licencing and Technology Transfers, Mediation, Litigation, Arbitration. Covering the whole scope of IP rights, we represent domestic and foreign clients in proceedings regarding the registration of industrial rights as well as their maintenance, in contradictory proceedings with the Industrial Property Office and with the Courts, in licensing negotations and unfair competition actions, in administrative proceedings with Customs Offices. Additionally, of course, these services are completed by consulting, counseling and searches in order to give our clients a complete IP service.
How big an issue is IP theft in the emerging markets? Which sectors are most affected by it?
We will not assess other emerging markets, but we are of the opinion that the main problem in our country are so called ‚open market halls‘ offering to shoppers cheap counterfeits/fakes of consumer goods (namely sports wear, shoes, perfumes, leather goods etc.)
In what ways does IP theft differ from sector to sector? I.e. which areas are more inflicted by trademark infringement, business strategy theft etc.?
The sector of consumer goods differs from other sectors namely in the fact that it concerns mass infringement, and namely mass infringement of trademark rights.
What can be done to protect IP rights in such markets?
There is a necessity to establish cooperation with
customs officers, and of course, cooperation with the police is also very effective. In this respect it is important to say that the police have already learned that this type of criminal act exists and they have learned how to proceed in mass seizure of counterfeits cooperating with customs officers. The positive fact is also that the whole agenda of contradictory proceedings was transferred to Municipal Court in Prague.
What are the challenges involved in registering IP rights in these regions?
With regard to registration of Trademarks we are of the opinion that it is not as important to file applications for a lot of variants of the same Trademark with very extensive list of goods and/or services as the real use of the subject Trademark on the territory of the Czech Republic. We have frequent experiences with lack of materials proving the use of Trademark which results in jeopardy of registered rights.
How do the protection strategies differ from those employed in more developed markets?
Regarding the legal environment (adopted acts and implemented directives of the EU) we can compare our country with all other European markets. The Czech Patent Act was adopted to be fully in accordance with European Patent Convention as well as the Trademark Act and Industrial Design Act are adopted according to respective directives of EU.
Nevertheless, the number of cases results from fact that the counterfeits are still subject to interest of the public namely in poor regions due to the friendly price of the goods and the threat of compensation of inflicting damage is cold in comparison with the everday profit of the counterfeiter. The hope for the future is Law of enforcement of rights of industrial property which gives the clear rules to Courts for evaluation of damage compensation.
do you often deal in cases of infringement? We solve the most frequent cases in connection
with seizure of the counterfeits by customs officers. We are glad that there is a great success to detect a lot of cases already in opposition proceedings.
do you see any need for legislative change regarding IP rights in developing regions? Have there been any recent relevant legislative changes?
At this moment there are no new legislative changes. We can state that from joing the European Union in 2004, all legislative changes proceed in succession of acceptance of respective directives of EU. We think this is sufficient.
What are the future aims and aspirations for your firm?
To serve well. We are aware that we will not be able to obtain some worldwide position, and we know that our best quality is in perfect knowledge of local conditions and we want to take this advantage to give the best services to our clients. LM
Contact:
dr. Jan Hák PAtEntSERVIS Praha a.s. na Podkovce 281/10 147 00 Praha 4 CzECH REPUBLIC
tel.: + 420 261 090 011 Fax:
+ 420 261 214 921 Email: patmag@patentservis.com