clarke wilmot presentation to ukti clients
TRANSCRIPT
© 2015
© 2015
Avoiding the export elephant trap
Introduction
The Primer
5 Case Studies
Questions
© 2015
PART 1
Introduction
© 2015
Clarke Willmott’s IP Team
Trade Mark and Design Portfolio Management
IP Dispute Resolution and Litigation
IP Contracts (franchising, licensing, joint-
ventures, co-development and assignments)
IT Contracts and Disputes
Anti-counterfeiting
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PART 2
The Primer
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The Primer: IPRs
DESIGN PATENT
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The Primer: IPRs
National rights
Negative rights
Most limited in duration
Remedies
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The Primer: Why Protect IP?
Maintain market share by preventing third
parties infringing rights
Increase profitability and value of business
Create income stream
– sell the IPR
– licence the IPR
Obtain damages through infringement action
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The Primer: Route to Market
Sell directly via the internet or physical outlets
Agency
Distribution agreements
Franchising
Manufacture under licence
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The Primer: Legal Considerations
Know your customer/distributor/agent
Written contracts/export agreements
incorporating trade terms
Local laws/regulations
Data Protection
Ownership of IP
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Primer: Export-specific
considerations
Who is your customer (and who are you
dealing with)?
Due diligence/background checks
Advice on local laws
Tariffs
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Primer: Trade terms
Internationally recognised standard terms to
determine:
– Transport arrangements and costs
– Insurance obligations
– Passing of title and risk
Why use them?
Incoterms® 2010
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Primer: Payment Mechanisms
Transactional risks
– Payment in advance – the buyer risks
not receiving the goods
– Payment on delivery – the seller risks
not receiving payment
Two mechanisms aimed at
addressing the risks
– Documents against payment (bill
of lading)
– Letters of credit
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Primer: Other provisions and
format
Standard provisions for export terms and
conditions
Note particularly:
– Packaging requirements
– Payment terms
– Retention of title
– Consequences of delayed payment
– Insurance
– Force majeure
– Governing law and dispute resolution
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Primer: Dispute resolution
Potential problems with resolving disputes:
– Multiple legal systems
– Significant distance between parties
– Language complications
Alternative dispute resolution, e.g.
– Arbitration
– Mediation
Arbitration awards are much easier to enforce
in other jurisdictions: New York Convention
© 2015
PART 3
Case Studies
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Case Study 1 – Availability Searches
Problem – Client based in the UK but wanted to move into other
territories
– Client had innovative toy product
Solution – Availability searches for designs, patents and trade marks
Benefit – Reduced the risk of third party objections
– Allowed client to avoid potential pitfalls
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Case Study 2 - Registration
Problem
– Client had grown UK business
– Client operating in Australia and US
– Client wanted to expand abroad
– No overall strategy for trade marks
Solution
– Identified core territories and goods
– Reviewed existing portfolio and identified gaps
– Made recommendations on further filings
Benefit
– Secured extensive rights in core territories
– Easier to expand into new countries and enforce rights
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Case Study 3 – Due
Diligence/Overseas Partners Problem
– Products manufactured under licence by licensee
– Enhanced risk of counterfeiting (including back-door
counterfeiting)
– Quality control
Solution
– Due diligence on chosen partner including personal visit (s) pre-
contract and reference site visits
– Thorough, detailed agreement
– Separate contract with local agent to carry out QA
– Regular programme (as per contract) of sampling and inspection
– Technical anti-counterfeiting measures
Benefit
– Awareness of the issues
– Contractual basis for redress
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Problem – Want to supply overseas through people with highly
visible local presence and contacts
– Need to appoint agent or distributor – but which?
– Want to maintain control of goodwill and branding
Solution – Choice of agent or distributor determined by EU Agency
Regs & compensation risk
– Control of websites using licensing terms and trade mark
brand guidelines
– Specific assignment of local goodwill in products
– Ownership of IP developed overseas from the outset
Benefit – “Best of breed” solution tailored to client business
Case Study 4 – Legal structures
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Problem – Client acquired by US parent and tasked with distribution
of US parent’s products/services and its own in EEA
– US terms of business did not reflect EU legal framework
and required sharing of marketing data with parent
Solution – Review of US terms of business to ensure compatibility
with EU regulatory structure esp. liability issues
– Review of data protection registration to ensure
compliance
– Internal arrangements for data transfer
Benefit
– Risk of DPA action averted
Case Study 5 – Local law/data
protection
© 2015
Questions
© 2015
Contact Details
Paul Cox, Partner
Clarke Willmott LLP
T: 0845 209 1583
W: www.clarkewillmott.com
Susan Hall, Partner
Clarke Willmott LLP
T: 0845 209 1498
W: www.clarkewillmott.com