World Trademark Industry Review Awards 2008 On May 20 2008 World Trademark Review announced the winners of its second Industry Awards for in-house trademark counsel at a ceremony in Berlin. The awards are designed to recognize the vitally important work done by in-house trademark counsel, and identify the teams and individuals that are performing their functions to the highest possible standards. The following pages feature profiles of the winners www.WorldTrademarkReview.com July/August 2008 World Trademark Review 17 OKA4817 SHE World Trademark Review:OKA4817 SHE World Trademark Review Ad 11/6/08 2:51 PM Page 1 Intellectual Property mind to market Patents | Trade Marks | Designs Protection | Commercialisation | Enforcement ...just for a moment of all the great ideas you’ve had for your business. Creating and identifying new ideas is only the start of an intellectual property (IP) strategy. Effective capture, management and commercialisation of your IP is the key to sustaining competitive advantage. Shelston IP is one of the most respected IP firms in Australia and New Zealand, practising in both jurisdictions. We provide responsive, commercially relevant IP services, carefully tailored to our clients’ business strategies. Mind to market, think... www.ShelstonIP.com | Sydney | Brisbane | Newcastle Telephone +61 2 9777 1111 | Facsimile +61 2 9241 4666 Asia-Pacific Team of the Year Yamaha Infringement and counterfeiting in China the senior executive officer and director apology to Yamaha in a motorcycle weigh heavily on the minds of many of Yamaha in Japan. “We hope our lawsuit magazine. global trademark owners these days, but serves as a useful reference to other “We will continue to respond to in 2007 they had the legal department of enterprises confronted with similar infringements of IP rights with a resolute Yamaha Motor Company to thank for trademark infringements.” attitude,” confirms Ohtsubo. Meanwhile, easing their worries a little. In June While it was the size of the damages Jeroen Auping, general counsel of Yamaha China’s Supreme Court awarded the that grabbed the headlines, the way in Motor Europe who collected the award on company Rmb8.3 million (approximately which they were calculated was also behalf of his Asia-Pacific colleagues, said $1.1 million) in an action for infringement notable. According to a court-appointed that his team took inspiration from their of its registered trademarks YAMAHA and auditor’s report, defendant Zhejiang Japanese counterparts. “What is important FUTURE. The result represented a major Huatian had incurred a loss in for a company like Yamaha is that we victory not only for the Japanese manufacturing the 2,113 infringing guard our trademarks properly,” he manufacturer of motorized vehicles, but motorcycles. The court reasoned, however, comments. “Regional head offices are a for all brand owners operating in the that profits may have been transferred to feature of our organization and we aim to burgeoning Chinese market. The damages affiliated companies and decided to guard our IP rights throughout the world.” were the highest amount ever awarded to disregard the report, which was based on a foreign company for trademark incomplete financial information. Instead, infringement, which some took as a sign it accepted Yamaha’s calculation of the of increasing willingness on the part of likely profit made, and also ordered two Other nominees: China’s judges to get tough when it comes distributors of the infringing bikes to Anheuser-Busch to IP enforcement. contribute to part of the damages. The Lacoste “In our opinion, the judgment was a icing on the cake came when all three Lenovo landmark decision,” says Toyoo Ohtsubo, companies were ordered to issue a public LVMH Group Sean McManis (right) of Shelston IP presents the Asia-Pacific Team of the Year award to Shigeki Hirasawa (centre) and Jeroen Auping of Yamaha www.WorldTrademarkReview.com July/August 2008 World Trademark Review 19 Stay ahead of your competitors Strategic use of IP is becoming the most important tool to stay ahead of the competitors. One of the reasons is the increasing amount of companies offering similar products. Zacco is one of the leading intellectual property consultancies in Europe, with eight offices in Scandinavia and Benelux. We achieve measurable results by creating freedom for our clients’ businesses combined with cost-effective and efficient handling of Intellectual Property Rights. For further information, visit www.zacco.com Europe, Middle East & Africa Team of the Year Philips For Jef Vandekerckhove, Philips’s vice full range of technology, financial, business depending on the situation. president, value extraction, it is the people and IP perspectives. Teams are put together Philips also cooperates very closely with that make the company’s IP team so on a cross-functional basis, with various other brand owners at the customs successful. “The people we employ are very professionals working in an integrated way procedure level. It has created IP tools which proud to work for Philips and are proud of to help the company realize its business it has distributed to various customs the valuable Philips brand,” he says. “We are goals. The organizational change has authorities across Europe. “Over the past a highly motivated and committed group.” required a significant level of adaptation year or so we have been working with other While the expertise within the company and the process is ongoing. “Everyone rights holders to develop a digital is second to none, it is the organizational involved in the IP side is now generalist in enforcement toolkit,” explains structure of the IP team that makes it stand their approach, which broadens the Vandekerckhove. “It will provide customs out from the crowd. In 2000 Philips merged experience and expertise of Philips’s counsel authorities with important information the IP team with the various standards teams across the board,” says Vandekerckhove. regarding, among other things, the brand to form a department known as Intellectual Philips is as innovative in its approach owners’ goods, shipping routes and shipping Property & Standards (IP&S) – an to dealing with other brand owners as it is schedules. It is for this kind of collaborative independent business unit within the Philips in relation to its internal organization. In and open approach, that Philips’s IP&S team organization. “IP&S looks at IP rights in recent years Philips has developed a is rightly championed by many in the combination, not in isolation,” explains number of collaborative ventures with industry and in private practice. Vandekerckhove. “We have created an other leading rights holders. Producing a international integrated intellectual asset number of highly successful co-branded Other nominees: management system, whereby the traditional products. Philips’s flexible approach BATMark silo structure has been abandoned.” comes in useful in these circumstances as Nestlé When dealing with an IP issue, the IP&S the protection and enforcement strategies Nokia experts look at the overall picture across the for its trademark rights, by necessity, vary Unilever Tove Graulund of Zacco presents the Europe, Middle East & Africa Team of the Year award to Jef Vandekerckhove of Philips www.WorldTrademarkReview.com July/August 2008 World Trademark Review 21 Deep roots. Wide perspective. Congratulations to World Trademark Review Industry Award winner - Petrobras, Latin America Team of the Year To get world-class advice, you need an instinctively global law firm – Baker & McKenzie. We are built to help clients address the We combine an uncompromising commitment to We are able to see risks others often overlook challenges they face with natural ease excellence with fluency – in the way we think, work and opportunities that many miss. At the same and sophistication, whether they operate and behave. We have the ability to help companies time, deep local knowledge and understanding in North America or northern China – or both. navigate sophisticated legal and business issues at means we are skilled at dealing with the home and across practices and borders, bringing subtle nuances in business and culture that the right team and solutions regardless of location. exist everywhere. Let us show you how fluency can help you. www.bakernet.com Latin America Team of the Year Petrobras Petrobras may have won our award for Latin communications experts to ensure the worth recently when a staff member America, but there is no doubt that its victory company gives the best impression possible. vacationing in the United States came signals global ambitions. Profits at the “This is a challenge,” says Felberg, “because across a car repair workshop that copied Brazilian energy company have increased the size of Petrobras and Brazil make some Petrobras’s corporate logo. sharply during the past few years and brand people wary, and the culture and economies Other problems will require similarly strategy has been stepped up to match. of Latin American countries is very varied.” inventive solutions as the company takes its “Before 2000 most of our business was a These differences extend to the local brands global and registers trademarks monopoly here in Brazil,” comments Eduardo efficacy of trademark protection and anti- in countries which 10 years ago it did not Felberg, Petrobras’s manager of corporate counterfeiting regimes across the region. anticipate entering. Felberg, however, has the image and brands. “We knew we weren’t Nevertheless,