Module workshop 5B IP Enforcement Name of speakerVenue & date

ip4inno is brought to you by: European Commission, DG Enterprise & Industry European Patent Office 19 consortium partners in the first ip4inno project This particular module was written by: Mariano Riccheri (coordinator) Ana Ramalho Istvan Mollnar Kristina Janusauskaite with funding from the EC and EPO

The Disclaimer! This training material concerns intellectual property and business strategies only in general terms. This training material should not be relied upon when taking specific business or legal decisions. Rather, professional advice should be obtained which suits the circumstances in question.

ip4inno You are a trainee lawyer in a SME called “MELINDODA” located in Marseille, France, which is faced to some problems regarding its IP ; you have to help the managing director, Mr. Melindo, to take decisions. This firm sales professional photograph tools that have been created during summer The CEO, Mr. Melindo, who comes from Naples, has registered the European trademark MELINDODA the same year. This creative mind has developed a product he has named “Melindodina” and which consists of a camera that allows to develop instantaneously three-dimensional photos, using a technical process developed by M. Melindo himself. A patent, registered in several countries, including France and Spain, was granted for this invention in October The invention is manufactured and successfully sold around Europe. For commercial and visibility purposes, the firm launched a website, whose name has been registered in January 2007 : “ 4 Workshop 1 Facts

ip4inno5 Due to the economic growth of his activities Mr. Melindo wanted to register the extension “.com” for his website. He was very surprised when he discovered that the domain name was already registered by one of his former -employee (who was dismissed for professional misconduct and who was always in trouble with other employees). Mr. Melindo immediately thought that this person registered the domain name in order to trouble Melindoda. Unfortunately, it was not the last surprise Mr. Melindo was faced to: He was totally disappointed when, surfing on the World Wide Web, he discovered that a firm named “Transferico Ltd”, located in Madrid, manufactures and sells exactly the same invention as Melindodina, using a similar process, but under another name, “Camedesign”. 5 Workshop 1: problems

ip4inno What are the IP Rights involved in this case ? 2. How can you qualify the behavior of the ex-employee who registered the domain name “.com” ? What are the possibilities offered to Mr. Melindo to recover the domain name “melindoda.com” ? Workshop 1: questions

ip4inno7 1 What are the IP Rights involved in this case ? Patent Internet domain name 2. How can you qualify the behavior of the ex-employee? What are the possibilities to recover the domain name “melindoda.com”? Cyber squatting Solutions: –find an agreement –going to court –UDRP

ip4inno8 3. Do you think that Transferico Ltd should patent its invention “Camedesign” ? Why ? 4. What can Mr. Melindo do to enforce his rights regarding his patented invention “Melindodina” ? 8 Workshop 1: questions

ip4inno9 3 Do you think that Transferico Ltd should patent its invention “Camedesign” ? Why ? Probably not, because of the lack of novelty of its invention 4 What can Mr. Melindo to enforce his rights regarding his patented invention “Melindodina” ? The owner has to enforce his rights: –by taking provisional and precautionary measures –via a legal action (probably civil) –using ADR methods

ip4inno10 5 Mr. Melindo doesn’t want to go to court, try to find some reasons of his refusal ? 6 On a strategic commercial point of view, what alternative dispute resolution could be of interest to Mr. Melindo ? 10 Workshop 1: questions

ip4inno11 5 Mr. Melindo doesn’t want to go to court, try to find some reasons of his refusal ? Most of the time, going to court: Engages the firm in long procedures Is costly Is not confidential Gives a bad publicity to the business Gives uncertain results 6 On a strategic commercial point of view, what alternative dispute resolution could be of interest to Mr. Melindo ? Negotiations –the outcome can lead to a business partnership and/or a license agreement

Workshop 2 Customs action Facts: The company Melindoda has a registered Community Trade mark “Melindoda” for photograph tools. Being cautious, the company submitted an application for customs action within the Community 6 months ago. Two days ago the company received a phone call from the Polish customs officer. The officer explained that they had just stopped a freight composed of some photograph tools imported from a non-EU country which looked irregular. The goods were labelled with a similar trade mark to the one registered by Melindoda. The officer explained that they found Melindoda’s contact details by checking the EU customs database.

Questions: 1. What rights are involved in this case? 2. What is the basis for any further Melindoda’s actions? 3. What are the concrete steps Melindoda should take? Workshop 2: questions

Question 1: What rights are involved in this case? Answer: -Registered Community Trademark (“Melindoda”) - Valid within the whole Community (27 Member States) - Seized goods allegedly infringe Melindoda’s rights to brand photograph tools with its registered trade mark and to import them Workshop 2: answers

Question 2: What is the basis for any further actions? Answer: -The basis for any further action is Melindoda’s customs application submitted 6 months ago - Melindoda should react promptly: only 10 (to 20) days to initiate court proceedings! Workshop 2: answers

Question 3: What are the concrete steps Melindoda should take? Answer: - Make a call and talk to the customs officer - Ask the customs officer to provide more information (written) on the seized goods - Ask him to provide information about consignor of goods or other people involved (if seen from documents) - Start preparing a request to the court to start proceedings and submit it within 10 days - Option: start parallel negotiations with the infringer Workshop 2: answers

Thank you for your attention!

Good continuation!