EXPERIENCE EXCHANGE

• Messe Frankfurt against Copying (DE)
• IPR Protection in third Countries (IT)
• Innovation Protection Programme (AT)

Messe Frankfurt against Copying (DE)

Title of case

‘Messe Frankfurt against Copying’ - integrated support at Trade Fairs

Organisation

The ‘Messe Frankfurt against Copying’ scheme has been set up by the Messe Frankfurt Exhibition GmbH in partnership with a network of IPR enforcement bodies from the public and private sectors.

The Messe Frankfurt Exhibition GmbH group is one of the world’s leading exhibition corporations which organises more than 100 trade fairs worldwide.

IPR Expert Group Recommendations

Support service provision should be co-ordinated nationally, with local access to IPR information, advice and IP management training being provided by the established business support organisations, in close co-operation with specialist IP agencies;

Many business support organisations have arrangements to facilitate SME access to lawyers specialising in IP matters. These practices need to become more widespread;

Potential hot spots of counterfeiting and piracy, such as trade fairs, should be targeted by special measures to ensure swift and effective action.

Areas that the case illustrates

• Rapid response mechanism
• Client orientation through in-situ provision of advisory support
• Enforcement strategy
• Networking with professionals in the IPR enforcement field
• Effective liaison with customs and investigative bodies
• Good information support

The ‘Messe Frankfurt against Copying’ scheme relates to:

• Patents
• Trademarks
• Designs
• Copyright

Brief description

The ‘Messe Frankfurt against Copying’ scheme is a classic example of a counterfeiting and piracy ‘hot spot’ in a trade fair context with co-ordinated advisory support and enforcement services available in-situ to exhibitors via a stand at the Frankfurter Messe trade fairs. Support is available to all exhibitors, whether SMEs or not. The success of the scheme has led to it now being replicated at trade fairs outside Germany.

Full description

In January 2006, Messe Frankfurt became the first trade fair organiser to launch a concerted campaign against product and brand piracy with a cooperative effort undertaken by a number of partners. [1]

Messe Frankfurt is not authorised to take action against infringements of intellectual property rights itself. Instead, a brochure entitled ‘Protection against Brand and Product Piracy’ is distributed to all registrants, including advice on measures to take prior to attending the trade fair to protect their trademark or product.

Under the ‘Messe Frankfurt against Copying’ scheme, legal advice is available to exhibitors, including an emergency service to help them obtain preliminary injunctions. This advice is available, in the first instance, from a special stand at the Frankfurt trade fair with further support being available from a network of partner organisations.

During the trade fair, an exhibitor can obtain assistance using the ‘Messe Frankfurt against Copying’ scheme to take the following measures:

• Declaration to cease and desist: the ‘copier’ signs an undertaking that he will no longer offer the copied products for sale and will pay a fine in the event of a further infringement;
• Preliminary Injunction : the holder of the intellectual property right obtains a temporary court injunction prohibiting the ‘copier’ from selling and exhibiting certain products.

Advisory services are provided on-site at the Frankfurter Messe, initially free of charge to exhibitors and enforcement is undertaken directly by the customs authorities. Customs authorities routinely inspect fairs for infringing items and may be contacted by rights holders to plan such actions. If further assistance is needed, there is a network of partner organisations where the costs are negotiated on a case-by-case basis. Lawyers are also available on short notice (at their normal fees).

Measures to enforce IPR rights are incorporated in the Frankfurter Messe’s registration form. By signing the registration form, an exhibitor agrees to follow the principles of statutory regulation. [2]Should this obligation be infringed, Messe Frankfurt may exclude the exhibitor(s) concerned from further participation in the current event or in any future events.

Transferability & Performance

The "Messe Frankfurt against Copying" initiative is widely regarded as a successful scheme. The number of confiscations has fallen markedly (at some Messe Frankfurt events by as much as 30%) while applications for design registration are increasing. Some 5,000 people came to its stand at the 2007 Frankfurt trade fair.

The campaign has had success beyond Frankfurt. The German Patent and Trademark Office, for example, believes that one of the reasons for the 8% increase in applications last year was the "Messe Frankfurt against Copying" campaign. Messe Frankfurt is also expanding its campaign to include events held abroad. It has already begun the international rollout of the initiative with a stand offering advisory services at the Automechanika Argentina, Automechanika Middle East and Automechanika Shanghai trade fairs. [3]

Further information

Web site:

• http://www.messefrankfurt.com/frankfurt/de/messe/willkommen/mfac.html

Further information can also be found in the brochure 'Protection against brand and product piracy' which is distributed to all exhibitors and can be downloaded from the Messe Frankfurt website. The publication is available in German and English.

Contact details:

Messe Frankfurt GmbH

Ludwig-Erhard-Anlage 1

60327 Frankfurt am Main

Germany

Tel: +49 69 75 75-0

Email: available via ‘contact’ on website

IPR Protection in third Countries (IT)

Title of case

Protecting the IPR of SMEs in third countries: the Italian Ministry of Economic Development

Organisation

Italian Patent and Trademark Office (UIBM) together with the Directorate General for Trade Promotion within the Ministry of Economic Development and the Ministry of Foreign Affairs

IPR Expert Group Recommendations

There should be better co-ordination and a more consistent development of enforcement services in third countries.

Areas that the case illustrates

• Strategic co-ordination
• Enforcement strategy
• Addressing problems in third countries and international IP strategy
• Intelligence gathering
• Effective liaison internationally

The Italian Patent and Trademark Office’s services relate to:

• Patents
• Utility Models
• Trademarks
• Designs
• New Plant Varieties
• Semiconductor topographies

Brief description

An international network of 14 IP Helpdesks has been set up by the Italian Patent and Trademark Office (UIBM).

Full description

Background & resources

The rationale for setting up the network of Helpdesks was to strengthen international cooperation in the area of IPR protection and enforcement and to respond to an identified need among Italian SMEs in third countries for advice and signposting to relevant local organisations on IPR issues generally, and enforcement issues in particular, including problems relating to the counterfeiting of goods.

The 14 Helpdesks were therefore set up in countries either where small Italian enterprises are particularly well represented/ active in particular sectors, or where the perceived risk of IPR infringement was higher.

The desks are located in ICE offices (Istituto per il Commercio Estero –Italian Trade Commission) worldwide. They offer free information and assistance to business in registering and enforcing IP in host countries and in market monitoring.

The Helpdesks are managed by individuals with expertise in IP issues, and particularly in supporting the enforcement needs of SMEs. In the case of each Helpdesk, an Italian IP expert works alongside their local IP expert counterpart.

Third countries where IP Helpdesks have been established to date include: China (Beijing, Guangzhou, Shanghai and Hong Kong), India (New Delhi, Mumbai), Taiwan (Taipei), Vietnam (Ho Chi Minh City), Korea (Seoul), United Arab Emirates(Dubai), the Russian Federation (Moscow), Turkey (Istanbul), Brazil (San Paolo) and the USA (New York).

In terms of the institutional set-up for the operation of the IP Helpdesks, the Italian Patent and Trademark Office works in close coordination with the Directorate General for Trade Promotion within the Ministry of Economic Development and the Italian Ministry of Foreign Affairs and in the near future will be working with the new National Committee for Combating Counterfeiting. The activities of the helpdesks also require the collaboration of the IP institutions of the relevant countries. This institutional collaboration provides a basis for developing economic relations between enterprises from Italy and from the host countries and gives them a long term perspective that is necessary now that there is a less clear distinctions between domestic and international markets and enterprises have to develop an international IP management strategy.

National patent offices play a crucial role in building confidence in international markets and creating a knowledge market where all the participants operate according to shared rules. In this way they make an important contribution to economic growth.

Enforcement

Legal assistance can be provided for certain cases whose solution is deemed of great importance to make economic activities in the relevant third country more transparent for the generality of enterprises. However, currently, no legal cases have been funded to date.

Integration into other IPR services and SME support

Given that the IP Helpdesks should not ‘crowd out’ private sector activity, there is generally a tendency to refer SMEs experiencing a problem or seeking redress to specialist legal or advisory service providers. Referrals are also made where appropriate to other types of publicly-funded support services available to Italian SMEs when doing business in third countries.

Transferability & Performance

Supervision and monitoring of the project activities of the IP Helpdesk network is carried out by a Scientific Committee made up of representatives of the Italian PTO, the Directorate General for Trade Promotion within the Ministry of Economic Development, the High Commissioner for combating counterfeiting (shortly to be replaced by the National Committee for Combating Counterfeiting) and the Ministry of Foreign Affairs, which is also responsible for decisions concerning counterfeiting pilot cases in third countries. The first meeting of the Scientific Committee took place on 25 June 2008 and the monitoring activities will be implemented starting from the last quarter of this year.

The scheme is an effective example of how Member States can develop bilateral relationships with institutional counterparts in third countries in order to strengthen international cooperation in IPR enforcement, raise greater awareness about particular areas of IPR faced by SMEs, and provide advisory and signposting assistance to SMEs to further sources of support.

Further information

Web site:

• http://www.uibm.gov.it/

A dedicated web site is under construction which will be accessible from the web sites of all administrations involved

Contact details:

Daniela Carosi

Italian Patent and Trademark Office

Ministry of Economic Development

Ufficio italiano brevetti marchi (UIBM)

Ministero dello sviluppo economic

Direzione generale per la proprietà industriale

Tel: +39 0647055644

Mail: daniela.carosi@sviluppoeconomico.gov.it

Innovation Protection Programme (AT)

Title of case

The Innovation Protection Programme of the Austria Wirtschaftsservice (AWS)

Organisation

The Austria Wirtschaftsservice (AWS)

IPR Expert Group Recommendations

Effective enforcement by businesses has to begin with proper IP management;

Intellectual Asset Management has to be a core part of the promotion of innovation. Innovation agencies and innovation support programmes have to make effective provision for IPR enforcement;

There should be better co-ordination and a more consistent development of enforcement services in third countries;

A degree of experimentation ought to be encouraged and best practice exchanged.

Areas that the case illustrates

• SME competence building
• Intellectual asset management
• The provision of dedicated services
• Special provision in 3rd countries
• Integration with innovation support
• Integration with general business support

The AWS services relate to:

• Intellectual Assets
• Trade Secrets,
• Licensing & Confidentiality Agreements
• All forms of Intellectual Property

Brief description:

AWS’ Innovation Protection Programme arises from its core work of supporting innovation among Austrian enterprises and provides an example of enforcement work being well integrated into the support of the enterprises throughout the innovation cycle. AWS’ services in this area, and particularly those in third countries, are themselves innovative and are helping to define new types of enforcement support.

Full description

Austria Wirtschaftsservice (AWS) is a state-owned bank specifically geared to supporting

small and medium enterprises. The main aim of AWS is to strengthen the competitiveness of domestic client companies and to secure Austrian jobs on a long-term basis. AWS has a staff of about 230 and included in its provision is a series of technology and innovation services. In fact, AWS is the largest Austrian provider of services for evaluating and financing technological inventions.

The Innovation Protection Programme (IPP) was established in 2006 as a response to the needs of SMEs in relation to the international protection of their intellectual property.

Through the IPP, AWS provides its clients both with funding for IPR protection in emerging markets and with regional expertise. “Emerging markets” are defined as all non-OECD member countries, though the emphasis is on China, India, and Russia. Fluent speakers of Mandarin and Russian provide regional and legal knowledge, both through the Vienna headquarters and the Shanghai branch office.

IPP Services

AWS is of the view that it is important, through training, to raise IPR awareness among Austrian entrepreneurs and to help them to establish and manage their IPR portfolios. These actions are seen as essential prerequisites of effective enforcement and form part of the programme. From this basis, IPP then provides risk assessment, monitoring and investigation of infringements and support for legal and administrative action in complex environments such as China, India, and Russia. Lobbying governments in target countries is important “background activity”, behind the scenes.

AWS decides the degree of its involvement in a given case according to the prospects of success, the economic importance of the infringement to the company in question and to the national economy, and the degree to which the case can serve as an example.

Technology audits are one of the instruments used for risk assessment: experts conduct audits tailored to the specific needs of an enterprise, assess the situation of the product and recommend a comprehensive strategy for IPR protection and enforcement all along the value chain. Mediation has also been used effectively, especially in cases of copyright infringement.

AWS has built up a network of specialized lawyers in the IP field in China, India, and Russia. Because of the larger business volume expected, this has enabled AWS to offer economies of scale to clients in some cases, through discounted “flat rate” payments for patent filings etc.

In 2007, a typical enforcement case would include:

• Registration of patents, trademarks etc., partly funded via IPP;
• Infringement monitoring;
• Sending “cease and desist” letters to IPR infringers;
• Support for the client in obtaining enforcement measures from courts and administrative bodies;
• Actively organising the seizure of offending goods at trade fairs;
• Strengthening the legitimate rights’ holder’s legal position by filing additional rights and pleas for annulment of fraudulent IPR registrations.

About 25% of all Austrian companies who have registered their IPR in China in 2007 received some form of support from AWS.

In providing its services, AWS currently follows the EU’s SME or “de minimis” rules, but there are plans to enlarge its base in line with the “Community Framework for State Aid for Research and Development and Innovation”.

Other Activities

In addition to its training provision for enterprises, AWS provides regular training for Austrian enforcement agencies, helping to raise their awareness of SME issues in the IPR area.

Co-operating with other agencies is an important part of the way that AWS works. It has close links with overseas branches of the Austrian Chamber of Commerce (Wirtschaftskammer Österreich) known as AWO (Außenwirtschaftsorganisationen), which are accredited as part of the local embassy or consulate. Co-operation includes exchanging business information, mutual referral of clients, organising joint training events, and co-ordinating support mechanisms so as to ensure maximum efficiency.

The Shanghai office maintains regular exchanges with the local AWO and various other business organisations there (EU Cham etc.), while the IPP programme staff in Vienna are also actively involved in several EU projects. These include a transatlantic IPR project for policy alignment, and a project to strengthen companies’ management competence. Finally, IPP is well integrated into the Austrian partners of the Enterprise Europe Network and acts as a subcontractor to them.

Transferability & Performance

The Austrian Ministry of Commerce evaluates the performance of AWS at several levels; with regard to the SME support system as a whole, institutes such as KMU-Forschung and Technopolis have carried out studies; the first external audit of the IPP itself which will be coordinated by Joanneum Research (Graz) is expected to be finalised during 2009. As an indication of take-up, AWS organised 26 seminars, workshops and similar events in 2007 and these were attended by 1,300 people.

Further information

Web site:

• http://www.awsg.at/ – in German
• http://www.awsg.at/portal/index.php?x=51&n=686 (IPP)

Contact details:

Dipl. -Ing. Dr. Georg Buchtela

Head of Intellectual Property Management

Austria Wirtschaftsservice | ERP-Fonds

Ungargasse 37, 1030 Wien

Tel.: +43 (1) 501 75 - 551

Mail: g.buchtela@awsg.at