FENIX LEGAL moderating at Scandinavian Technical Fair  Read more on: www.tekniskamassan.se
 

On Wednesday, September 21, Petter Rindforth will speak at Global Patent Congress in Copenhagen, with the theme: Implementing Strategies to Protect Your Intellectual Property in an Online Environment.

Petter was commissioned by WIPO (UN World Intellectual Property Organization) in the last minute replaced Erik Wilbers (Director, WIPO Arbitration and Mediation Center) as a speaker. Petter is a long standing UDRP panelist for eg WIPO, and also with the ICANN lawyer group IPC.

 

The first of the new TLDs (there will be about 200 other new gTLDs by this time next year) is .xxx, a sponsored TLD intended as a voluntary option for pornographic sites on the Internet.   According to the ICM Registry, responsible for .xxx, there may be as much as 3 to 5 million registrations, as companies are also anticipated to defensively register their trademarks for .xxx. The Sunrise Period for registered trademark owners started on September 7, and will end at October 28, 2011. The Landrush will be from November 8 – 25, and General Availability commences on December 6, 2011.

Apart from your need to consider your companies interest of active use or defensive registration of your trademarks under .xxx, this is also a good time to look over your domain name policy in general – in order to prepare for the release of another up to 200 new top level domains next year. 

Fenix Legals advisors are actively involved in the Intellectual Property Constituency of ICANN. Please contact us in order to assist you in updating your Trademark and Domain Name Policy.

 

InterContinental Finance Magazine has conducted a global review / vote for "Legal Excellence Award 2011" among 15,542 private and corporate lawyers. Fenix Legal KB won the nomination for "LAW FIRM OF THE YEAR - Intellectual Property". The jury stated that Fenix ​​Legal's service and knowledge had an effective impact on the industry's emergence in the intellectual field.

Even Finance Monthly magazine has named Phoenix Legal to "Trademarks Law Firm of the Year, Sweden"

We thank all in-house counsel and external IP offices around the world, which again confirmed that our efficient, knowledgeable and cost-conscious way to perform our service is appreciated and also strengthens the customer IP-protection and business opportunities!
 

Next spring, 2012 the Internet ruling organization ICANN will open the Internet to everyone that wants to register their own Top Level Domain (TLD). The decision was made by the ICANN board on June 20, 2011. Initially ICANN expect applications for a bit more than 200 new TLDs.

Fenix Legal´s CEO Maria Zamkova, participating at this historical ICANN meeting was interviewed about one of the expected new TLDsa, .РУС (cyrillic for .RUS)

Click here to see the interview >>

PETTER RINDFORTH MODERATED A TABLE TOPIC AT INTA ANNUAL MEETING IN SAN FRANCISCO

During the INTA Annual meeting in San Francisco in May 2011, Petter Rindforth moderated a table topic on The Do’s And Don’ts of Using Trademarks in Social Networking.

A full table of participants from USA, Europe and Asia discussed issues like:
Facebook and similar sites, “Suffix Policing” Trademarks in the Social Networking Era, Critical sites, Social networks as a source to find pirate copies, etc, and Social networks, blogs and similar sites as a part of your Marketing and PR Department. 

As Petter introduced the session: 

According to Wikipedia, “social network is a social structure made up of individuals (or organizations) called "nodes", which are tied (connected) by one or more specific types of interdependency, such as friendship, kinship, common interest, financial exchange, dislike, sexual relationships, or relationships of beliefs, knowledge or prestige.” 

Today, the most intensive, most active and international social networks are on-line. And you can be sure that, whether you like it or not, your or your clients’ trademarks will be out there, discussed, advertised and criticized. 

Whatever you do in your traditional off line and online marketing, everything may be quickly destroyed or - in the best cases – enormously strongly market, by independent social networks.

The question is: How can you use this in the best possible way to make sure that your trademarks goodwill is not only kept, but even getting stronger?

Fenix Legal has the pleasure to announce that we have opened our 3d office in Sweden on November 23, 2010. This time in the industrial capital on the west coast – Gothenburg. Patent engineer Ulf Haagerup will head our Gothenburg team. Ulf Haagerup has a long experience from other Swedish patent firms as well as from industry, like Volvo.

Petter Rindforth and Maria Zamkova have participated in the annual INTA Leadership Meeting in the USA. Over 800 participants from all over the world have attended this conference.

The Board of the Internet Infrastructure Foundation (IIS), operator of the .se Swedish registry, plans to trial a Fast Track DRP later this year. Petter Rindforth of Fenix Legal has been one of the legal advisers to the IIS in the working of the new process that will flow as follows: 

1. A full complaint is filed with fees appropriate for one or three panellists. 
2. The complainant ticks a box to select a Fast Track procedure if there is no response.
3. If the respondent files a response, the case is processed under the existing DRP rules.
4. If no response is filed within 30 days and the Complainant has elected the Fast Track procedure, the case
    will be decided within 10 working days by a single Panelist (or the Presiding Panelist if three panelists
    have been selected).
5. The complainant is reimbursed the full administrative fee less a deduction of SEK 2000 (approx. EUR 200).
6. The Panelist confirms that all requirements for a Fast Track decision have been met and renders a decision  
   (transfer, cancellation or denial) without any further comments. However, the Panelist must also write a  
   summary of the case, to be included in the new searchable database for .se disputes.

The Fast Track will be trialed for a period of at least 6 months, most likely during the last quarter of 2010.

Petter Rindforth of Fenix Legal was elected the new CET Special Reporter Domain Names at the FICPI World Congress in Washington , D.C. in June.

The Fédération Internationale des Conseils en Propriété Industrielle (FICPI), established in 1906, is an association of intellectual property attorneys in private practice represented in 84 countries around the world.

The CET (FICPI’s study & work commission) is responsible for the supervision and examination of developments in international and, in some cases, national legislation and the preparation of opinions by the Federation.

Egmont Kärnan, the Swedish publishers of “Kalle Anka & Co”, a comic featuring Donald Duck, say they’re sorry for an issue featuring the “loveable children’s character” as an online pirate. In the comic strip “A Loaded affair”, Donald Duck plans to burn copies of a CD with the nephew’s favourite artist, Åke Skrål. Huey, Dewey and Louie first downloaded an album with the artist, “but only to listen to it while we save up enough money to pay for an original”.

Donald Duck realizes that there are big money in the pirating business and begin copying in big scale in spite of the nephew’s warning that “it is illegal”. Donald stops only when he is being caught in the act by Scrooge McDuck, informing Donald that he owns the recording company and therefore is entitled to sue Donald Duck.

Petter Rindforth of Fenix Legal was elected the new CET Special Reporter Domain Names at the FICPI World Congress in Washington , D.C. in June.

The Fédération Internationale des Conseils en Propriété Industrielle (FICPI), established in 1906, is an association of intellectual property attorneys in private practice represented in 84 countries around the world.

The CET (FICPI’s study & work commission) is responsible for the supervision and examination of developments in international and, in some cases, national legislation and the preparation of opinions by the Federation.

The Russian Chamber on Patent Disputes recently adopted a new stance in trademark revocation procedures.

Under the previous trademark law any person could file an application for trademark revocation if the registered mark had not been in use for an uninterrupted period of 3 years.

After January 1, 2008, a new Russian IP legislation came into effect. Under the new law only "an interested person" could file an application for trademark revocation. The law did not clarify what "an interested person" means, and during 2008 the revocation procedures therefore remained the same, i.e.  any person who filed an application for revocation was 
supposed to be "an interested person".

However, in the beginning of 2009, the Chamber on Patent Disputes started rejecting applications for revocation that could not substantiate the interest. For instance, the mere fact that the applicant filed a trademark application confusingly similar to the trademark that is  being revoked is considered as insufficient prove of such interest.

At the moment there are no clear criteria on what circumstances are sufficient to establish “interest” for the applicant in revocation procedures, apart from that “the applicant has to prove that the trademark adversely affects its rights and interests”. 

The European Commission has announced a significant cut of the official fees for Community Trademarks. As from the beginning of May 2009, there will be a single CTM fee, replacing the current system of separate application (now €750) and registration (now €850) fees. The new single fee for electronic filing of an application in 1 – 3 classes will be €900, with the registration fee set at zero.

But, there is even better news for everyone with immediate plans for trademark registrations covering all 27 member states of the European Union: If you file the application before the effective date of the new fee regulation, you will only have to pay €750 in official fees! The reason is that when filing now, your application will not reach the registration milestone before the effective date of the new fee regulation, meaning that you pay the current €750 filing fee but no registration fee.

Fenix Legal would like to encourage you further to protect your trademarks (and designs) throughout the European Community. 

Contact Petter Rindforth at petter.rindforth@fenixlegal.eu  to find out more.    

Late 2008, the Russian telecommunications company Superfon registered with the Russian PTO, Rospatent, a trademark in the form of a
smiley and announced its intention to demand compensation form other companies using smileys in their advertising, such as McDonald’s and Nestle. Representatives from Rospatent quickly made official statements that no one would have to pay any compensation to Superfon just based on the use of traditional smileys. Rospatent explained that Superfon did not register a smiley by itself alone, but rather as a pictorial element in the form of a smiling face, together with the word “Superfon”. In addition, the smiley alone is a non-distinctive element as it is widely used among the population as a means of non-verbal (emotional) information. The smiley as such can therefore not be registered as a trademark pursuant to Article 1483 of the Russian Civil code.  

 

Petter Rindforth, managing partner at Fenix Legal, has been elected new President of the Association of Swedish Patent Attorneys
(SPOF).

SPOF – founded in 1884 - is the association organizing patent engineers, trade mark consultants and lawyers working at the leading Swedish Patent Firms. SPOF is a member organization of the Fédération Internationale des Conseils en Propriété Industrielle (FICPI). 

Guccio Gucci SpA applied for trademark protection in Sweden for ”GG” as word marks. The Swedish PTO rejected both applications on the ground of confusing similarity with the Swedish company name GG Sömnadsindustri (“GG Sewing Industry”), a small local company.  
Gucci appealed to the Patent Appeal court, arguing that the GG symbol is extremely frequently copied, that a strong trademark protection is necessary in order to fight piracy and that GG is a famous mark. Gucci added that there could be no risk of confusion between their mark and the name of the Swedish company. The appeal was however rejected by the Patent Appeal Court.  

Gucci is not without protection for GG in Sweden, they have previously registered device mark variations both as national Swedish trademarks as well as CTM’s, but the recent denial for protection of the letters GG as such may cause some difficulties in Gucci’s fight against piracy.    

   

According to Clause 9 of Article 1483 of the Civil Code of the Russian Federation, a domain name holder is entitled to demand cancellation of the registration of a similar trademark if the domain name was registered prior to the trademark rights.  

The said provision has been used in bad faith to bar legitimate trademark owners form registering their trademarks, as some “businessmen” registered domain names just to be able to transfer them for a high amount of money to the trademark owners.  

Now, the State Duma of the Russian Federation is considering amending Article 1483, to exclude the possibility of refusal of a trademark registration.  

Lars E Johansson, M.Sc, European Patent Attorney has joined Fenix Legal.
 
Lars has extensive experience from both telecom and biotech, and has also worked at some of the major Scandinavian patent agencies. 
 
Lars Johansson is an important addition to our patent practice group, adding his skills to our present services within the patent area,
including our successful and cost-effective work with validations in Sweden.   

In February 2009, the International Trademark Association (INTA) will arrange a two day seminar on ”Trademark Law and the Internet” in San Francisco, Cal., USA.  

Fenix Legal, whose consultant Petter Rindforth is since long an active member of the INTA Internet Committee, supports the seminar as Gold sponsors. “It is always important to inform of the risks and possibilities with the global networks called the Internet”, says Rindforth. “We are proud to be given the possibility to sponsor this excellent initiative by the INTA”.  

Key note speaker in San Francisco is Dr. Vint Cerf, formerly Chair of ICANN, now Vice President and Chief Internet Evangelist at Google. Vint Cerf is often called “the father of the Internet”

On March 9, 2009, the Swedish Domain Name Registry, .SE, is changing its business model. In short, it means that the domain name holder of a .se domain will be customer of one of the accredited representatives of .SE, instead of being a direct customer to .SE.

Thus, the Association of Swedish Accredited Registrars, “Registrars.se” has turned to Fenix Legal to create a General Agreement to be used between a Registrar and a Registrant for every domain name service under .se. The new Agreement will be offered to all Registrars from early December 2008.

Fenix Legal is participating in the International Trademark Association’s Leadership Meeting in Boca Raton, Florida, USA , November 11 –15. Petter Rindforth is a member of the Panel of Neutrals, the Adjunct Professor SIG, as well as the Internet Committee.

The well known copyright lawyer Marie Andrée has joined Fenix Legal. Marie represented the daughter of the late artist and children’s author Bertil Almqvist, as well as the museum Beredskapsmuseet, against the Swedish Armed Forces in the longstanding “En Svensk Tiger” dispute. 

In Swedish, “En Svensk Tiger” can mean “A Swedish Tiger” as well as “A Swede can keep his mouth shut”. The latter definition was used in Sweden during WWII to warn its citizens against revealing defense secrets. Almqvist’s iconic drawing of a tiger accompanied the motto. Following the war, the image was adopted as the logo for Sweden’s military intelligence and security service (MUST) without permission. After battling for eleven years over the image, the Armed Forces lost the case in Stockholm district court. Marie Andrée convinced the court to order the Armed Forces to pay damages to Almqvist’s daughter and the museum – the amount being one of the largest ever seen in a Swedish copyright infringement case.

A foreign subsidiary in Russia cannot call itself “Russian”, according to the 4^th Part of the new Russian Civil Code. Prior to the changes, international companies often used Russia or Rossia as part of the company names of their Russian subsidiaries, a habit that sometimes confused the market on the origin of the enterprise in question.  

According to section 4, article 1473 of the new legislation, the inclusion of the word “ Russia ” (in practice also the transliteration of Russia) will only be allowed – by special permission from the Government – if more than 75% of the company is governmental owned. Existing companies not complying with the  new rules will have to change their names.    

Petter Rindforth and Lars Carlén made a presentation about legal issues on  blogging, at the Swedish Marketing association’s event Tendensdagen. "A blog, used in the right way, can add significant value to your trademarks,  but you need to keep control of the information”, Lars & Petter told a  reporter from the Scandinavian fashion magazine Habit.   Lars informed the audience on the best technical platforms for blogging, as well as the importance of developing a business plan for the company blog. Petter highlighted the legal issues, such as protection of personality rights and the EU data directive, copyright and the new Swedish marketing act.

                                                                                    Lars Carlén and Petter Rindforth speeking about blogging at Tendensdagen