1. ip4inno CASE STUDY : Introduction 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 2005. 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 consist in a camera that allow 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 2006. 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 : “www.melindoda.fr”.www.melindoda.fr 1

2. ip4inno 2 CASE STUDY : Problems 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”. 2

3. ip4inno 3 CASE STUDY : Questions 1 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”? 3

4. ip4inno 4 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

5. ip4inno 5 CASE STUDY : Questions 3 Do you think that Transferico Ltd should patent its invention “Camedesign” ? Why ? 4 What can do Mr. Melindo to enforce his rights regarding his patented invention “Melindodina” ? 5

6. ip4inno 6 3 Do you think that Transferico Ltd should patent its invention “Camedesign” ? Why ? Probably not because of the non-novelty of its invention 4 What can do 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 –using ADR methods

7. ip4inno 7 CASE STUDY : Questions 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 ? 7

8. ip4inno 8 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