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Cam Trade Marks & IP Services takes part in International meeting in Lisbon to discuss best practice in protecting company brands.

Dr. Roman Cholij of Cambridge-based Cam Trade Marks & IP Services joined over 120 other participants from industry and professional law and trade mark attorney firms last week to discuss trade mark practice, protection and enforcement in Europe. Over thirty countries were represented, including Brazil, the US and Canada, Hong Kong and even the island of Macao. The conference was organised in Lisbon by the International Trademark Association (INTA), based in the US but with offices in Brussels, and with a membership of over 5000 trade mark owners and practitioners.

Trade mark protection is vital to companies who have or are aiming to develop successful businesses. A registered trade mark - a trade mark that has been examined and accepted for inclusion in the national trade mark register - is the cheapest and most effective way of preventing others from competing unfairly by adopting the same or a confusingly similar trade mark and perhaps trading off your reputation and goodwill. With a registered trade mark a business is given a monopoly over the way it wants consumers to identify its products - usually (but not exclusively) by a name. The UK, like many other countries, has a ‘first to file’ system, so that even if a business has already been trading under a particular name, it doesn’t automatically have the right to have that name registered. Any outside party can come in first and claim it as its own (it doesn’t have to be using it yet) and the earlier trading company might even find itself at the end of an alarming solicitor’s letter.

The Lisbon conference examined the best ways that brand owners have of acquiring and enforcing their registered trade mark rights. Owners can acquire extensive rights throughout Europe by using the Community Trade Mark system, where one registered trade mark can give protection in 27 countries, and internationally by using the so-called Madrid Protocol, which allows a single application to be processed by up to 74 signatory countries. The relative merits of these systems compared to direct national filings were analysed from the perspective of trade mark owners in the US, Europe and the Far East, the conclusion being that although there were some drawbacks and potential risks (on certain technical issues), in general they were beneficial to owners and their use was to be encouraged.

Enforcement of rights, to stop look-a-likes and counterfeits, occurs at country borders by specially trained customs officials and by other agencies within the country. Figures from last year show that customs seizures of counterfeits were worth more than 250 million euros. However, customs officials only act if the goods are protected with a registered trade mark.

Counterfeiting is not restricted to just luxury or high-value goods, it is now found in the medicine and food and drinks industries and poses serious health risks. Speakers at the conference concluded that counterfeiting, which today is linked with large-scale organised crime and terrorism, was a problem that spanned all continents requiring efforts that need to be co-ordinated globally.

A Global Congress on the problem of counterfeiting and piracy (illegal copying of digital files, CDs and DVDs) will be taking place in February of 2008 in Dubai. Co-sponsored by INTA, this Congress is being convened by the World Customs Organisation, World Intellectual Property Organisation and Interpol.

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