Brand Protection Online
A Practical Guide to Protection from Online Infringement
Brand Protection Online is a go-to guide for any user or adviser in need of strategies to combat IP infringement in the digital world or to get up to speed with the latest developments affecting brand holders online.
Online channels offer unprecedented growth opportunities for businesses. But as brands become increasingly accessible online, so too do they become more susceptible to trademark infringement, anti-competitive behaviour and hijacking by cybersquatters, phishers and scammers. With the potential to divert business, or even irreparably tarnish brand reputation, it is important that companies do everything in their power to protect against IP infringement online.
Featuring contributions from a host of leading experts in the field, this new and practically-focused title tackles the core issues of infringement and abuse online, analysing key trademark issues that businesses face on the Internet.
Part I considers overarching brand issues, applicable worldwide – including, how to get started, domain name registration and protection, tools at brand owners’ disposal to prevent counterfeiting and dealing with popular platforms. Part II offers comparative analysis of the hottest topics and issues facing brands online – including AdWords, injunctions against intermediaries, enforcement and issues of jurisdiction.
Brand Protection Online is edited by brand protection specialists Theo Savvides, joint managing partner at Bristows, and Jeremy Blum of Bristows, London.
Table of Contents
|Table of contents||4|
|Introduction Jeremy Blum Theo Savvides Bristows LLP||6|
|How online businesses canget protection and what can be protected Cam Gatta Emmy Hunt Redd Solicitors LLP Tara Knapp Microsoft Corporation||12|
|Domain names Nick Wood Com Laude||36|
|Enforcement and the challenges online Flora Greenwood Bristows LLP||60|
|Counterfeiting Michael Gardner Harry Jupp Wedlake Bell||72|
|Deciphering the technical jargon of enforcing brands online Graham Robinson Bishop IP Investigations||86|
|Popular platforms Chloe Dickson Tim Heaps Rob Powell Sacha Wilson Bristows LLP||94|
|Australia Rafaella Felthun Odette Gourley Corrs Chambers Westgarth||106|
|Brazil Joaquim Eugenio Goulart Rodrigo Borges Carneiro Fernando de Assis Torres Dannemann Siemsen Advogados||118|
|China Michele Ferrante Ferrante Intellectual Property||128|
|France Richard Milchior Granrut Avocats||146|
|Germany Astrid Harmsen Wolfgang Kellenter Andrea Schlaffge Hengeler Mueller||160|
|India Shwetasree Majumder Fidus Law Chambers||174|
|Italy Federica Bocedi Julia Holden Trevisan & Cuonzo||188|
|Japan John Tessensohn Shusako·Yamamoto||206|
|Netherlands Willem Leppink Ploum Lodder Princen Ady van Nieuwenhuizen Kneppelhout Korthals Lawyers||220|
|South Africa Ian Learmonth Darren Olivier Adams & Adams||234|
|Spain Ignacio González Royo Meitar||246|
|Sweden Tom Kronhöffer Henrik Lindström Ramberg||262|
|Switzerland Christoph Berchtold Mark Schweizer Meyerlustenberger Lachenal||272|
|United Kingdom Andrew Butcher Sean Ibbetson Bristows LLP||288|
|United States James L Bikoff Elizabeth Borland Richard Rivera Courtney Adams Thornton Smith, Gambrell & Russell LLP||308|
Associate, Meyerlustenberger Lachenal
Christoph Berchtold is a member of the IP team of Meyerlustenberger Lachenal, Zurich. He specialises in all areas of intellectual property law (patents, supplementary protection certificates, designs, trade marks, copyright, licensing and unfair competition) and pharmaceutical law and regulatory affairs (medicinal products and drugs). He advises clients from the pharmaceutical, engineering, advertising/media and consumer goods industries.
James L Bikoff
Partner, Smith, Gambrell & Russell LLP
James Bikoff’s practice focuses on formulating and implementing worldwide trade mark and copyright protection and enforcement programmes for clients in the consumer and industrial product sectors, as well as non-profit organisations and service providers such as banks and insurers. He also engages in internet and domain name counselling and enforcement actions. He has been active for over 30 years in directing worldwide trade mark and copyright protection, litigation and anti-counterfeiting enforcement and, more recently, internet and domain name litigation, particularly in relation to international sports. He also counsels a growing number of wineries and restaurants on trade mark and copyright issues.
Mr Bikoff was lead counsel in a landmark anti-cybersquatting action for the National Collegiate Athletic Association – involving the first freeze of assets against an offshore internet gambling website – and was lead counsel in a case involving the largest number of domain names ever joined as defendants: International Olympic Committee v 2000Olympic.com, Civ No 00-1018-A (EDVa 2000). He has also achieved victories in Uniform Domain Name Dispute Resolution Policy proceedings on behalf of the American Red Cross, the International Olympic Committee and other clients.
Mr Bikoff frequently writes and speaks on IP protection and enforcement in the United States and abroad and has testified before Congress in support of IP legislation. He was actively involved in the enactment of the US Trademark Counterfeiting Act and the Anti-cybersquatting Consumer Protection Act. He is chair of the American Bar Association Trademark Litigation Committee and the INTA Internet Committee subcommittee on WHOIS and Privacy issues.
Partner, Bristows LLP
Jeremy Blum is an IP specialist and has advised on many contentious matters involving trademarks, copyright, designs and confidential information. His IP experience is diverse, with a particular focus on trade marks and copyright. He has advised on a number of high profile disputes before the English High Court, Court of Appeal, the Court of Justice of the European Union, the European Union Intellectual Property Office and the General Court.
In particular, he is a specialist in advising on strategies to combat IP infringement in the digital world and has advised on a number of cases regarding online infringement. As a consequence, he also has a particular interest in cross-border injunctions and jurisdiction for European Union trade marks and designs as well as copyright.
Associate, Trevisan & Cuonzo
Federica Bocedi is a member of both the IP litigation and pharmaceutical law and the trademark and unfair competition teams of Trevisan & Cuonzo. She specialises in civil procedure law and is involved in IP litigation, with a particular focus on patent, trade mark and unfair competition matters. She also assists clients with Italian Customs-related matters within the framework of monitoring programmes for customs action against goods suspected of infringing IP rights. She has assisted a number of clients with regard to electronic and pharmaceutical patent protection and advised on regulatory aspects within the framework of multijurisdictional litigation. Her experience also spans trade mark protection and unfair competition issues.
Ms Bocedi has contributed to Trevisan & Cuonzo’s publication Proprietà industriale, intellettuale e IT (Industrial and Intellectual Property and IT), particularly with regard to the chapters concerning trade marks and distinctive signs, copyright and IP litigation.
Partner, Smith, Gambrell & Russell LLP
Elizabeth Borland is a partner in the intellectual property department of Smith, Gambrell in Atlanta. She holds a Bachelor of Science degree in Mathematical Sciences (Computer Science Option) from the University of North Carolina and a Juris Doctor degree from Emory University. Prior to joining Smith, Gambrell, she served as a judicial law clerk for the Honourable Chief Judge Wilbur D Owns Jr of the United States District Court for the Middle District of Georgia. Ms Borland’s practice focuses on patent, trade mark, copyright and trade secret litigation, and aids clients in enforcing their intellectual property rights. She also prosecutes trade mark and copyright claims for numerous clients and assists them in maintaining their intellectual property portfolios. She has obtained favourable results in claims pursued in a number of US District courts and the Patent and Trademark Office and in domain name dispute proceedings.
Ms Borland has also received several accolades in recognition of her work from (among others) Managing IP (2013 and 2016) and Corporate INTL (2014). She currently serves on the International Trademark Association’s Alternative Dispute Resolution Committee.
Andrew Butcher trained with Bristows and qualified into the brands group within the IP litigation department in 2012. He advises across the full range of ‘soft’ IP rights, with advertising and trade mark law being his principal practice areas.
Mr Butcher deals with both contentious and non-contentious matters. He assists clients with domain name disputes and IP litigation in the English High Court and below, while on the noncontentious side he advises on trade mark filing strategy and compliance of advertising copy with UK advertising regulations. He has advised major brands on compliance with ambush marketing legislation for global sports events and has substantial experience in ensuring compliance of promotional mechanics and terms and conditions with UK advertising regulations.
In addition to his experience in private practice, Mr Butcher has completed secondments with several international clients for whom he advised on online brand protection and filed and defended UK Advertising Standards Authority complaints. He is co-author of the UK chapter of International Advertising Law: A practical global guide, published by Globe Law & Business.
Rodrigo Borges Carneiro
Partner, lawyer, industrial property agent, Dannemann Siemsen Advogados
Rodrigo Carneiro graduated in Law from the Pontifical Catholic University in Rio de Janeiro (PUC-RIO). He has a Master’s degree in intellectual property from the John Marshall Law School in Chicago in the United States (2000). He also has a post-graduate degree in international copyright law from King’s College, University of London (2005).
Mr Carneiro is a director of the Dannemann Siemsen Institute for Technical and Legal Studies. He services a significant clientele in the entertainment industry, including audio-visual aspects of music and new media, and works on the drafting and negotiation of contracts involving different areas of entertainment law. He also advises clients on trade marks and copyright, and deals with complex lawsuits involving entertainment law, copyright, personality rights and trade marks.
Chloe Dickson is an associate in the IP litigation department at Bristows in London, having joined the firm as a trainee solicitor in 2014. She holds a Master’s degree in Chemistry (MChem).
As part of her training at Bristows, Ms Dickson also spent three months on secondment to the in-house legal department of a leading internet services company, where she assisted primarily with contentious matters.
Lawyer, Corrs Chambers Westgarth
Rafaella Felthun is a lawyer in the intellectual property, technology and competition group at Corrs Chambers Westgarth. She works primarily in IP, consumer law and trade practices litigation, with an interest in science, technology and IP enforcement in the digital revolution.
Founding and managing partner, Ferrante Intellectual Property
Michele Ferrante is a highly recognised expert on the enforcement of IP rights and anti-counterfeit strategies in Asia. He was admitted to the Milan Bar and has advised clients on Chinese IP matters since 1999. He founded his first firm in China in 2004. His current firm, Ferrante Intellectual Property, has been recommended by Legal 500 as among the best firms in China.
Mr Ferrante is the author of several articles published in the Oxford Journal of Intellectual Property Law and Practice and the Journal of Internet Law (Wolters Kluwer Law & Business). He has contributed to numerous EU-China IPR dialogues and governmental meetings and collaborated with the United States Department of Commerce in raising awareness of IPR protection in China. He has been invited to speak and moderate at a number of leading conferences and workshops hosted by (among others) the European Communities Trade Mark Association (ECTA), the American Bar Association, the Ministry of Commerce of the People’s Republic of China and the Delegation of the European Union to China. Mr Ferrante is a member of the Anticounterfeiting Committee (ACC) of the ECTA and the International Trademark Association (INTA).
Partner, Wedlake Bell LLP
Michael Gardner is a partner and head of the intellectual property team at Wedlake Bell LLP in London.
Mr Gardner specialises in all forms of IP dispute resolution, including litigation in the English High Court and the Intellectual Property Enterprise Court (IPEC) and the obtaining of urgent injunctive relief. His practice includes anticounterfeiting work (including in the online space) and advising on parallel imports. He also advises on brand protection generally and conducts trade mark prosecution work and domain name dispute resolution.
Mr Gardner is the author of The Bright Idea Handbook published by Which? (a guide for would-be entrepreneurs on how to protect IP rights) and of the IP chapters in the advertising industry’s trade publication AdLaw, published by the Institute of Practitioners in Advertising.
Senior associate, Redd Solicitors LLP
Cam Gatta is a senior associate at Redd Solicitors LLP in London. His practice covers contentious, advisory and commercial work in all areas of intellectual property law, with a particular emphasis on trade marks and passing off, copyright and related rights, and design rights. He acts for large multinational corporations, small and medium-sized enterprises, start-ups and individuals. He has assisted clients operating in many industry sectors, including software development and computer games; electronic devices; fashion and design; cosmetics and beauty products; arts, education and publishing; fast moving consumer goods (FMCGs); office supplies; architecture, interior design and furniture; collective rights management and picture libraries; and tobacco and reduced-risk products. Mr Gatta has represented brand owners in relation to contentious proceedings before the EUIPO and the UK IPO (including appeals to the General Court of the European Union and the English High Court), and has been involved in trade mark infringement and passing off actions before the English High Court. He has significant experience in multi-jurisdictional trade mark portfolio management and counselling (including trade mark searches and prosecution), from both a private practice and an in-house perspective (having had the opportunity of being seconded to Microsoft’s Trademark Team on two occasions).
Joaquim Eugenio Goulart
Partner, lawyer, industrial property agent, Dannemann Siemsen Advogados
Joaquim Goulart is a partner with Dannemann Siemsen. With over 18 years’ experience, he is currently the partner responsible for the Litigation Group at Dannemann and specialises in patent litigation as well as trade mark litigation nationwide. He also has extensive experience in enforcing clients’ rights in both civil and criminal areas.
Mr Goulart has a postgraduate qualification in Economic and Corporate Law from Fundação Getúlio Vargas (FGV) and an LLM in Intellectual Property Law from John Marshall Law School in Chicago, Illinois.
Mr Goulart is co-author of Comentários à Lei da Propriedade Industrial, which comments on Brazilian industrial property law, and Coletânea de Leis de Propriedade Intelectual, a compilation of the laws relating to intellectual property in Brazil.
Ignacio González Royo
Senior associate, Meitar
Ignacio González Royo is a member of the intellectual property and technology team of Meitar, Israel’s leading international law firm. He was previously a senior associate with the intellectual property team of Garrigues in Madrid. He specialises in IP, brand protection, digital businesses, copyright, advertising and media law. He advises both on IP transactions and IP litigation, with a special focus on the digital environment. He has extensive experience in representing brands, technology giants, media groups, start-ups and independent developers. More recently, he has been particularly active in cross-border transactions in Europe, Latin-America and Israel.
Partner, Corrs Chambers Westgarth
Odette Gourley is a leader in the intellectual property practice of Corrs Chambers Westgarth, a premium independent national Australian full service commercial law firm. With more than 20 years’ experience in intellectual property, regulatory law and commercial litigation, she is one of the leading trade mark lawyers in Australia, practising across the full range of IP and trade mark law and litigation. Her track record includes major cases for leading companies in IP-driven sectors, and cases that have made law in Australia on important IP topics, including brands and trade marks. For example, she successfully represented E&J Gallo Winery in its infringement and validity challenge concerning the Barefoot brand; the High Court of Australia’s decision in that case now represents the leading authority on the nature of trade mark use in Australian law. Ms Gourley represented Winnebago Industries Inc in its challenge to the unauthorised adoption by Knott Investments Pty Ltd of the Winnebago name and logos in relation to recreational vehicles. This case has resulted in a number of important court decisions that are authoritative on aspects of intellectual property law and litigation.
Flora Greenwood has worked as an associate at Bristows for nearly five years, specialising in IP litigation, with particular experience in disputes involving online or cross-border infringement of IP rights. She has worked for clients in a broad range of sectors, including pharmaceuticals, telecommunications, banking services, retail and fast-moving consumer goods (FMCG). In addition, she was seconded to a multinational drinks company and a computer games company, in both cases helping to protect global brands. More recently, she has worked in the music industry, protecting the rights of performers and record companies.
Prior to her legal career, Ms Greenwood worked for an online jewellery brand, where she gained an understanding of building a luxury brand online.
Dr Astrid Harmsen is counsel in Hengeler Mueller’s Düsseldorf office and part of the firm’s IP group. She is, in particular, specialised in trade mark infringement litigation and unfair competition law and has dealt with numerous cases relating to the internet. She has also considerable experience with regard to licensing agreements, strategic trade mark law advice and border seizure measures.
Dr Harmsen has advised and represented companies from a variety of industries, including the luxury goods, food and beverages, and steel and sanitary sectors.
Dr Harmsen is author of a variety of publications on intellectual property law.
Associate, Bristows LLP
Tim Heaps trained with Bristows and qualified into the intellectual property litigation department in 2014. His experience covers both contentious and non-contentious matters, with a focus on trade mark and copyright disputes, patents, confidential information and advertising advisory work. Since joining Bristows, he has spent time on secondment in the in-house legal department of a multi-national company, advising on brand protection and marketing.
Senior partner, Trevisan & Cuonzo
Julia Holden is a senior partner of Trevisan & Cuonzo and is jointly qualified as an English solicitor and an Italian attorney. She has practised with the firm since its establishment in 1993. She has worked with Anglo-American companies and multinational corporations for many years, providing advice on all aspects of intellectual property, particularly trade mark protection and enforcement and including litigation, anticounterfeiting, unfair competition and customs
monitoring in diverse industries. She has worked with a broad range of clients. Her practice area covers intellectual property law, trade mark protection and enforcement, copyright law, anticounterfeiting and anti-piracy work.
Chartered trade mark attorney, Redd Solicitors LLP
Emmy Hunt is a trade mark attorney at Redd Solicitors in London and has advised clients on the protection and enforcement of trade marks and designs for over 10 years.
Ms Hunt acts for a wide range of clients in the fields of telecommunications, entertainment, electronics, luxury goods and fashion and, in particular, has advised clients on issues raised by brand creation, protection, exploitation and enforcement. She has extensive experience in the filing and management of international brand portfolios and acting for clients in contentious proceedings before the UK and EU intellectual property offices.
Sean Ibbetson is an associate in Bristows’ IP litigation department. His experience and interest are in disputes relating to brands and technology. Since he qualified, Mr Ibbetson has been involved in litigation before the English Court of Appeal, High Court and the UK IPO. He was part of the team which successfully represented Thomas Pink in litigation with Victoria’s Secret concerning the use of the trade mark ‘Pink’. He is also part of the team which is acting for Google in abuse of dominant position proceedings brought by online maps provider Streetmap. Mr Ibbetson also regularly advises on the regulation of advertising and has assisted such clients as McDonald’s, the Royal Mail and The Guardian with a variety of campaigns.
Associate, Wedlake Bell LLP
Harry Jupp is an associate in the intellectual property team at Wedlake Bell LLP in London. Mr Jupp specialises in all forms of IP dispute resolution, including urgent interim as well as final injunctive relief in the English High Court and the Intellectual Property Enterprise Court (IPEC). His practice includes anti-counterfeiting work (particularly online counterfeiting), advertising (including the use of paid-for search engine advertisements) and domain name disputes. He also advises on brand protection and enforcement. Mr Jupp frequently speaks and writes on intellectual property and commercial law issues. He acts as an honorary legal adviser to the Citizens Advice Bureau and as an expert adviser to Enterprise Nation.
Wolfgang Kellenter is a partner in Hengeler Mueller’s Düsseldorf office and co-head of the IP Group. He has more than 25 years’ experience in all areas of IP law, including trade mark and unfair competition law, where he has dealt with numerous cases relating to the internet. He specialises in (among other things) trade mark infringement litigation and licence agreements. In relation to IP matters, he has worked for leading global companies in the fashion and luxury goods, footwear, food and beverage and automotive sectors. He is also a leading patent litigator and has advised and represented companies from a variety of industries.
Dr Kellenter is author of a variety of publications on intellectual property law and a lecturer in intellectual property and internet law at the Düsseldorf Law School and Heinrich Heine University of Düsseldorf.
Business operations manager (trade mark team) Microsoft Corporation
Tara Knapp is the business operations manager (corporate, external and legal affairs) for Microsoft Corporation’s in-house trade mark team. She has specialised in helping companies build and maintain their global trade mark portfolios for the past 18 years, supporting many worldwide brand owners, including in the retail, pharmaceutical, and technology sectors. She has spent the last four years working in-house at Microsoft, developing brand protection and enforcement strategies for Microsoft’s diverse portfolio of brands and managing the day-to-day operations of the Trademark Team.
Tom Kronhöffer is a partner in the intellectual property department of Ramberg in Stockholm. He specialises in the practice areas of intellectual property and dispute resolution and has over 15 years’ experience in advising clients across a broad range of sectors, such as well-known fashion houses and luxury brands, sports and apparel, high tech, computer and media companies, leading retailers, banks, schools, universities, food distributors and manufacturers. He is a member of (among others) the Swedish Bar Association, the Swedish Anti-Counterfeit Group and the Association of IP Professionals in Swedish Industry.
In particular, Mr Kronhöffer has significant experience in infringement proceedings and anticounterfeiting issues. He has represented clients in leading cases involving ISPs that host counterfeit web shops as well as other online related IP-matters.
Associate, Adams & Adams
At the time of writing, Ian Learmonth was an associate at Adams & Adams. He specialises in intellectual property litigation and commercialisation. He is a fellow of the South African Institute of Intellectual Property Law. He holds an LLB from the University of Pretoria and an LLM from the University of Edinburgh. Mr Learmonth has been involved in a range of issues dealing with brand protection in relation to online infringement. He was the primary attorney working on Africa’s first AdWords litigation case in which the team achieved a successful result before the Supreme Court of Appeal in South Africa. He has also presented extensively on challenges to intellectual property posed by the digital age.
Mr Learmonth has decided to pursue a career as an advocate at the bar in South Africa. He commenced a pupillage at the Johannesburg Society of Advocates in January 2017.
Partner, Ploum Lodder Princen
Willem Leppink heads the intellectual property and marketing department at Ploum Lodder Princen. He studied at Western Carolina University and graduated from Groningen University in 1994. He was a partner at Nauta Dutilh and Simmons & Simmons before joining Ploum Lodder Princen in 2009.
Mr Leppink provides litigation services and advice in the fields of trade mark, copyright and advertising law. He represents well-known companies throughout Europe in counterfeiting and other infringement matters. He is very experienced in co-ordinating European brand and marketing-related projects. In the Netherlands, he litigates in conflicts concerning intellectual property and cases about misleading and comparative advertising.
Mr Leppink is a member of the Executive Committee at MARQUES and co-founder and honorary member of the Dutch Advertising Law Association. In addition, he is a domain name panellist with the World Intellectual Property Organization (WIPO) for both UDRP and ‘.nl’ disputes and a Legal Rights Objections Expert, as well as a Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP) panellist with WIPO and a domain name panellist with the Czech Arbitration Court for ‘.eu’ disputes. He is the chair of the editorial board of the Benelux trademark journal BMM Bulletin and a member of the editorial boards of the Journal of Intellectual Property Law & Practice (Oxford University Press), the European Copyright and Design Reports (Sweet & Maxwell) and the Dutch advertising blog Reclameboek.nl. He is an exam co-ordinator and executive board member of the organisation for the professional education of the Association of Benelux Trademark and Design Attorneys (BBMM). He is also a member of the exam board of the Netherlands Association of Intellectual Property Litigation Lawyers (VIEPA).
Henrik Lindström is a partner in and head of the intellectual property department of Ramberg in Stockholm and a member of the Swedish Bar Association. He specialises in the practice areas of intellectual property, marketing and dispute resolution and has 20 years’ experience in advising a broad range of Swedish and international clients within these areas. In particular, Mr Lindström has significant experience in infringement proceedings and strategic IP counselling. He has represented clients in leading cases involving competitors’ use of trademarks as meta tags and AdWords marketing as well as other online-related IP matters. He acts as counsel in international and domestic disputes before arbitral tribunals and courts.
Fidus Law Chambers
An intellectual property litigator, Shwetasree Majumder is the founder of the Indian intellectual property and technology law boutique firm, Fidus Law Chambers. She advises a wide variety of clients in the pharmaceutical, technology, fast moving consumer goods (FMCG), luxury, and apparel industries on IP protection and enforcement strategies in India. She was a member of the Board of Directors of the International Trademark Association from 2013 to 2015, the first woman from India to be appointed in the 135-year old history of the organisation. A regular speaker and author on a wide variety of legal issues in a number of fora, she enjoys teaching law students at universities across India and also trains the judiciary, customs and law enforcement agencies in India.
Ms Majumder currently chairs a working group created by the Central Board of Excise and Customs to draft a Voluntary Code of Best Practices for E-Commerce Portals and is also a member of a working group set up under the aegis of the Ministry of Commerce, Government of India, tasked with developing materials on the subject of Intellectual Property Rights for children under the National Education Policy.
Ms Majumder has recently received accolades in a number of IP-related reviews, including the World Trademark Review’s list of 1000 of The World’s Leading Trademark Practitioners, the International Who’s Who of Patent Lawyers, the India Business Law Journal’s 2015 survey of Indian IP firms and the lists of The World’s Leading Life Sciences Litigators and The World’s Leading Patent Litigators published by IAM Magazine.
Richard Milchior began his career in 1979 with the firm Lafarge Flécheux Ghestin, following his admission to the Paris Bar in that year. He then worked with the firm Raoul Castelain from 1981 to 1982 and was a partner with Robert Collin & Associés from 1983 to 1995 and counsel to Nauta Dutilh until 1999. In 2000, he became a partner of the firm Milchior Smilevitch. He has been a partner with Granrut Avocats since 2005. He works both in French and in English.
Mr Milchior leads the IP/IT/media department of Granrut Avocats and works for several major French and international clients in this field, carrying out work before the EUIPO and the French IP office as well as the French and EU courts. He also practises transactional work, including, for example, transfer agreements and R&D contracts, and advises clients on their strategy He regularly contributes to conferences in French and English and writes in numerous reviews.
He is a member of the alumni association of IEP Paris and is a member of numerous intellectual property associations such as the INTA and ECTA.
Partner, Adams & Adams
Darren Olivier is a partner in the trade mark department and heads up the IP commercialisation group of Adams & Adams. He holds degrees in law and commerce and has specialised in all forms of brand protection, enforcement and commercialisation work for over 20 years while based in London and Johannesburg. He is a dual qualified English solicitor & South African attorney with specialist trade mark credentials in both countries. Mr Olivier first spoke on brand protection and the internet in 2002 as a panellist at an IBA conference, where he represented views from the United Kingdom. Since then, he has written and spoken extensively on online brand protection issues and was recently the partner in charge of Africa’s first ever AdWords litigation, which reached South Africa’s Supreme Court of Appeal. He is also lead counsel to the BSA – The Software Alliance for South Africa.
In 2008, Mr Olivier started Africa’s first ever IP blog – Afro-IP – with Professor Jeremy Phillips which continues to post African IP content and to which he acts as editor. He also sits on the editorial board for OUP’s prestigious Journal of Intellectual Property Law & Practice.
Associate, Bristows LLP
Rob Powell is an associate in the commercial intellectual property and IT group at Bristows. He specialises in transactional intellectual property, general commercial and IT matters, with a particular focus on the technology and media sectors. He has significant experience in assisting and advising clients, including a variety of brand owners, on the interpretation, negotiation and drafting of a wide range of commercial contracts, such as IP and technology licences.
Associate, Smith, Gambrell & Russell LLP
Richard Rivera is an associate in the litigation and intellectual property practice groups of Smith, Gambrell & Russell and is based at its office in Jacksonville. He regularly assists clients in IP licensing, compliance and prosecution, as well as a wide range of litigation matters with a special emphasis on consumer-related matters. He has a degree in Economics from the University of Florida and earned his JD from the Florida State University College of Law.
Managing director, Bishop IP Investigations Ltd
Graham Robinson is the managing director of Bishop IP Investigations Ltd, a company which has specialised in conducting intellectual property investigations for the last thirty years. Mr Robinson has a law degree and is qualified as an intellectual property litigator, having practised with two major London law firms before entering the investigations sector. He leads the team at Bishop IP Investigations, which conducts IP-related investigations on behalf of brand owners and their legal advisers all over the world. Bishop IP Investigations is believed to have one of the largest dedicated IP investigations teams in the world, with multilingual staff drawn from a variety of disciplines and backgrounds. Bishop IP Investigations is part of the Bishop Group (www.bishop-group.com), which provides a wide variety of other corporate investigative services, including fraud investigations, asset tracing, due diligence, competitor intelligence and general litigation support.
Partner, Bristows LLP
Theo Savvides specialises in intellectual property with a particular focus on IP disputes. He has over twenty years’ experience advising clients on a broad range of IP matters in the media, technology, retail, consumer products, automotive and life sciences sectors. In recent years, his practice has focused on advising technology businesses, as well as traditional businesses transitioning into the digital world, on the copyright, database rights, digital media and brand issues arising out of doing business digitally. Mr Savvides is recommended for intellectual property, brand management and media and entertainment by various legal directories including MIP – IP Stars, Chambers and Legal 500.
Dr Andrea Schlaffge is a counsel in Hengeler Mueller’s Düsseldorf office and part of the firm’s IP Group. She has considerable experience in the fields of trade mark and unfair competition law, in particular anti-counterfeiting and preliminary injunction proceedings, and has dealt with numerous cases relating to the internet. She also has broad experience in strategic trade mark advice. Dr Schlaffge also specialises in trade mark licensing agreements as well as employee invention law matters. She has advised and represented companies from a variety of industries, in particular the fashion and luxury goods, travel, food and beverages and automotive sectors. She is author of a number of publications on intellectual property law.
Senior associate, Meyerlustenberger Lachenal
Mark Schweizer LLM is a member of the IP team of Meyerlustenberger Lachenal, Zurich, a parttime judge at the Swiss Federal Patent Court, a lecturer on intellectual property law at the Federal Institute of Technology in Zurich (ETHZ) and a contributor to the IPKat blog. He specialises in contentious matters in all areas of intellectual property law, representing clients both before state courts and in arbitration proceedings. He has published widely in the fields of trade mark law, patent law, civil procedure and the psychology of judicial decision-making.
John Tessensohn is a director in the trade marks, licensing and dispute resolution departments of Shusaku·Yamamoto in Osaka. He holds LLB Honours and LLM cum laude degrees and has many notable milestones in his international trade mark practice, including the successful prosecution of numerous contentious cancellation, opposition, invalidation and litigation matters for international brand owners over 22 years. In particular, Mr Tessensohn has experience in international trade mark work (contentious and non-contentious), brand licensing, anticounterfeiting, unfair competition and litigation matters for clients from the apparel, alcoholic beverage, automotive, cosmetics, consumer goods, consumer finance, confectionery, electronics, entertainment, e-commerce, healthcare, motorcycle, musical instrument, nonalcoholic beverages, pharmaceutical, publishing, telecommunication and technology industries, as well as for financial institutions and national governments. He counsels clients in the selection, registration, licensing and enforcement of trade marks, anti-counterfeiting, customs recordals and seizures, publicity rights, domain name dispute resolution, false advertising and unfair competition matters.
Mr Tessensohn actively participates in the International Trademark Association (INTA), having spoken at several INTA annual and leadership meetings and served on the INTA Model Law, Finance and Examination Guidelines committees.
Courtney Adams Thornton
Associate, Smith, Gambrell & Russell LLP
Courtney Adams Thornton is an associate in the intellectual property practice of Smith, Gambrell & Russell in Atlanta. She focuses her practice on intellectual property litigation, with an emphasis on trade mark, patent, copyright and internetrelated matters. She works with clients throughout the life cycle of a brand, from clearance and registration to licensing, enforcement and litigation. Her practice includes both domestic and foreign trade mark prosecution, defending trade mark oppositions and cancellations before the US Patent and Trademark office, litigating before the Trademark Trial and Appeal Board (TTAB) and federal district courts. She has also achieved a string of victories in Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings. Ms Thornton received her BA in journalism and advertising from Stanford University. She earned her JD from Emory University School of Law. Prior to attending law school, Ms Thornton worked for over ten years in advertising, sales and marketing in San Francisco and Indianapolis for Fortune 500 software and computer technology and pharmaceutical and medical device companies, as well as mobile search and search engine optimisation startups. Her focus on intellectual property allows her to apply her past experience in business and technology to her legal practice.
Fernando de Assis Torres
Lawyer, Dannemann Siemsen Advogados
Fernando de Astis Torres graduated in Law from the Pontifical Catholic University in Rio de Janeiro (PUC-RIO). He is experienced in trade mark, copyright, entertainment and media law and in the area of domain names.
Ady van Nieuwenhuizen
Senior associate, Kneppelhout Korthals Lawyers
Ady van Nieuwenhuizen is a senior associate in the intellectual property, ICT and privacy department of Kneppelhout Korthals lawyers in Rotterdam, the Netherlands. She is a European intellectual property, marketing, ICT and privacy lawyer, with a particular focus on IP, digital media and advertising, privacy, brand protection and new technologies. Ady litigates and advises national and international clients on classical soft IP issues, but also on issues with respect to marketing, advertising, internet and privacy.
Senior associate, Bristows LLP
Sacha Wilson is a commercial and regulatory lawyer with particular expertise in advertising and digital media. He also advises on compliance across data privacy and e-commerce regulations. On the commercial side, Mr Wilson has advised on a range of contracts and terms and conditions from traditional advertising agency, sponsorship and talent deals to more technologyfocused mobile app development, cloud services and adtech deals. Terms and conditions on which he has advised include e-commerce terms of sale, mobile app end user licence agreements (EULAs) and digital service subscription terms. In relation to data privacy, he has advised on a range of projects, including general data protection compliance programmes, privacy policies, eprivacy issues and international data transfer strategies. In relation to e-commerce, he has advised on the launch of new e-commerce platforms and the associated regulatory issues, including compliance with consumer rights regulations on a multi-jurisdictional basis. In relation to advertising, the regulatory issues and projects on which he has advised include copy clearance, prize promotions, product placement and native advertising.
Prior to joining Bristows, Mr Wilson was a member of the in-house legal team at ITV, where he provided legal support to ITV’s online, interactive, mobile and video on demand (VOD) businesses. While at Bristows, he has worked inhouse on secondment for a range of clients, including a global advertising and media buying group, a leading news organisation and one of the world’s largest cloud services providers.
Managing director, Com Laude
Nick Wood is the co-founder and managing director of Com Laude, a domain name registrar that works exclusively with IP owners and legal professionals. With offices in London, Valencia, Washington DC and Seattle, Com Laude works with a blue chip client base, including some of the biggest brands in the world, providing strategic domain name management. Mr Wood is also managing director of Valideus Ltd, a consultancy that works with domain registry operators on strategy and rights protection management, including validation programmes. During the ICANN new gTLD programme, Valideus managed over 120 applications for dot brand registries, over 20% of the total from brand owners. Of all the applications that received scores of 100% from the ICANN evaluators, Valideus was responsible for 98%.
Within the ICANN environment, Mr Wood was one of three European representatives on the Implementation Recommendation Team (IRT) appointed by the ICANN Board to recommend rights protection mechanisms for the new gTLDs. He edited The Perfect Sunrise, a book on pre-launch rights protection measures, and was one of the founders of the Intellectual Property Constituency.
Mr Wood holds a BA from the University of London and a Master’s degree from the City University. He occasionally lectures at the Centre for Commercial Law Studies, Queen Mary University of London.