Tag: intellectual property

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Unfair Competition Law, Litigation, Enforcement of Industrial Property Rights and Remedial Measures

Unfair Competition Law

Unfair competition laws protect competitors from the unlawful conduct of their business rivals. As examples, unfair competition laws prohibit interference with business relationships, disparagement, and defamation, invasion of privacy, palming off, plagiarism, unfair competition, deceptive trade practices, fraud, misrepresentation, and other related conduct.

Many unfair competition issues arise in conjunction with infringement or misappropriation of intellectual property.

We can obtain many favourable decisions for our clients enjoining unfair competitive acts such as copying of our clients’ distinctive product shapes (product configurations), packaging (trade dress), patents (inventions, ideas), utility models (technical solutions) and names (trade mark)…

Litigation

We represent clients’ interests on both sides of these issues in courts as well as Offices throughout the Czech Republic. In addition, firm attorneys assist and consulted in connection with enforcement activities worldwide playing key roles in the strategy and coordination of foreign litigation.

Firm attorneys have highly trained abilities to understand modern technology and to explain it in concise, common sense terms. Equally important, firm attorneys have a thorough understanding of intellectual property law and the ability to work closely with other scientists and engineers, identifying what is truly important and what is not.

While litigation is expensive and time consuming and should be considered a remedy of last resort, it is often the only way to resolve conflicts. The enforcement of patents, trade marks, copyrights and other intellectual property matters through litigation and related activities, has been a principal component of the firm’s practice since its founding.

Enforcement of Industrial Property Rights

The patent owner may require towards a third person

  • a) which for the purpose of direct or indirect economic or commercial benefit possessed the goods infringing the Right, or
  • b) which for the purpose of direct or indirect economic or commercial benefit used the services infringing the Right, or
  • c) of which it has been ascertained that for the purpose of direct or indirect economic or commercial benefit it rendered services used in the course of activities infringing the Right, or
  • d) which has been designated by a person mentioned in paragraphs a), b) or c) as a person participating in manufacture, processing, storing or distribution of goods or rendering services, action related to the origin and the distribution networks of the goods or services by which the Right has been infringed.

Should the information under national regulation fail to be volunteered within a reasonable time limit, the Authorized Person may claim such information by lodging an action with the court relating to the infringement upon the Right. The court shall dismiss the action where it would bear no proportion to the importance of endangering of or infringement upon the Right.

The information shall include

  • a) name and surname or corporate name or business name and place of permanent residence or registered office of the manufacturer, processor, distributor, supplier and other previous possessor of the goods or service infringing the Right,
  • b) details of the manufactured, processed, supplied, stored, received or ordered quantity and of the price received for the given goods or services.

Remedial Measures

Should an infringement upon the Rights occur, the Authorized Person may seek a judicial decision that the infringer refrain from acts by which the Right is infringed or namely in particular

  • -by recall of products the manufacture or launch or storage of which resulted in endangering of or infringement upon the Right,
  • -by permanent removal or destruction of products the manufacture or launch or storage of which resulted in endangering of or infringement upon the Right,
  • -by recall, permanent removal or destruction of materials, tools or equipment intended for or used exclusively or mostly in the course of activities endangering or infringing the Right.

The court shall not order the destruction where the infringement upon the Right may be removed in a different manner and the destruction would be inadequate to such an infringement. Should the remedial measures aim at products, materials, tools or equipment not owned by the infringer of the right, the court shall take into consideration the interests of the third parties, in particular consumers and persons acting bona fide. The removal of label or counterfeited trademark from the products before launching thereof may be permitted only in extraordinary cases.

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Search and Monitoring

We have the in-house ability to conduct searches for the Czech and Slovak Republic, European Union and most worldwide regions. We also search, utilizing experienced search firms in all countries.

Through searches, watching services and private investigations, the firm is often able to detect infringers and counterfeiters at an early stage, thus permitting swift action to prevent the pirating of valuable trade mark rights, both in the Czech Republic and abroad.

Should you desire to use a mark, with or without registration, a professional trade mark search is recommended to determine whether your mark is eligible for use and registration. A trade mark search could also alert you to whether your use of the mark would infringe upon another party’s trade mark rights. It will help you find out whether your mark is available and whether or not you can claim exclusive rights for it.


Patents as source of information

Using modern online patent databases, a huge amount of information can be obtained selectively and very rapidly. For example, the following searches of patent literature can be performed, and are of great strategic interest to companies.

In all fields of competition, in particular in the areas protected by special rights (patent right, trade mark right, etc.) it is advisable to conduct a search, prior to going on the market, for the existence of prior rights in order to avoid possible collisions.

 

Monitoring

Our firm monitors maintenance fees and prosecution for patents, and other IP rights worldwide.

Monitoring your competitors

We also carries out competitor monitoring. This monitoring provides continuous information about the patent activities of others, and can provide indications of, for instance, future competing products or possible patent infringement.

We can:

  • conduct industry sector monitoring for clients in patents, designs and trade marks,
  • advise on patent citation watches where a client’s patents are cited in third party applications,
  • maintain watching services to identify applications to register trade marks anywhere in the world, which may conflict with our clients’ own trade marks. The Watch Service is also made available to other firms in the trade mark field who do not have this capability.
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Licensing and Assignments of IP Rights

Today, IP transactions play a key role in an organization’s overall IP strategy. The field of licensing has grown beyond the traditional patent, trade mark, design and copyright licensing agreement. A license agreement is a document whereby the licensor (which remains the owner of the intellectual property rights) authorizes the licensee to use the distinguishing sign on an exclusive basis.

We know that licensing and other intellectual property transactions go beyond sharing information. They involve comprehensive strategies that identify and prioritize a company’s most valuable intellectual capital, as well as counseling on the potential conflicts faced in commercially exploiting each asset. Our extensive practice in patent, trade mark, and copyright prosecution and litigation for our clients allows us to approach each transaction with a deep understanding of how the intellectual property will affect our client’s business, and where the opportunities and pitfalls of the transaction lie.

For instance, the enterprise that wishes to shift its production towards technologically more advanced sectors may achieve this aim in a shorter time and at more contained costs by resorting to technologies that are already available rather than by concentrating its efforts uniquely on the search for original solutions within its own company structure.
On the other hand, the enterprise that decides to license out its own technologies in countries where it would not be able to operate may count upon an additional economic return on its own investments, transferring all the expenses involved to the licensee.

A licensing agreement typically involves royalty payments based upon a percentage of sales. An assignment usually refers to selling the IP rights for one lump sum, but may also include royalties. The difference between the two is that by assigning the IP rights to another party, you are transferring legal title to that IP matter. What this means is that once the rights are assigned you no longer own or have any control of the rights.

Applications of a Intellectual Property or any interest therein, can be assigned and will be recorded, provided the assignment is in writing. An assignment can be filed at any time during the pending application or after grant of the patent or registration as well.
The aspect of the exclusive rights granted by the patent is that the patentee can authorise others to exploit the invention described in the patent.

The firm represents both licensors and licensees IP rights in licensing and franchising activities worldwide.

Recordal of changes

A change in ownership or other details such as a change of name or change of address of the proprietor must be recorded by making a single request to the responsible Office.

These frequently require recordal in many countries which can be expensive and time consuming, involving complex formalities and procedures with many different legal regimes. This is especially true in cases where receivership or the administration of assets is involved.

We have extensive experience in producing budgets, suitable documentation and the supporting evidence to achieve successful recordal at minimum cost.