How to deal properly with the IP issues at Exhibitions and IP ENFORCEMENT How to deal properly with the IP issues at Trade Fairs in Europe Giovanni F. Casucci 2010 W W W.C A S U C C I .B I Z

Enforcement Peculiarities during Exhibitions Timing Exhibitions frequently last a few days only and are held during week-ends The civil authorities usually do not work during week-ends Safe harbours legal exceptions In several jurisdictions, civil inunctions and seizures cannot be granted during the exhibitions but only prior to those. Only criminal interventions are allowed, but are limited to very “clear-cut” cases (identical) - not for look-a-likes or cases with confusing similarity

Exhibitors Interests during Exhibitions A) TO NOT SUFFER ECCESSIVE RAIDS It is important to avoid the risk that any alleged infringement may be prosecuted in a way that may create more prejudice than the advantage to the IP owner B) TO BE TIMELY PROTECTED It is important for the companies that have invested in participating at the exhibition and that invested in IPRs to not risk to be circumvented in case of IP infringements not timely and seriously prosecuted

C – How IP enforcement work in some major Trade Fairs In general Trade Fairs are normally subjected to the usual enforcement rules, provided for in each country In certain countries, there are some peculiarities (Italy for instance, does not allow civil seizures but only evidence collection measures. On the other hand, criminal enforcement measures are fully available if some alleged infringement may be considered criminal: identical and intentional)

C – How IP enforcement works in some major Trade Fairs Specific Trade Fairs - France The most important trade fairs in France are organised in Paris. There are no special provisions on enforcement of IP rights at Trade Fairs. The usual way to enforce IP rights in France is an evidence collection tool: The sasie contrefaçon. Only the Trade Fair Première Vision (fashion) has a special Copyright Unit in order to provide informative assistance

C – How IP enforcement works in some major Trade Fairs Specific Trade Fairs - Germany In Germany, there are some Trade Fairs quite sensitive to IP issues : Frankfurt and Cologne. In these Trade Fairs, a complete informative service trough brochures and other materials giving all the details related to the enforcement issues are provided. In any event enforcement measures are always taken up by the public authorities (civil courts, usually) and issued in very short time.

The solution offered by Frankfurt Messe W W W.C A S U C C I .B I Z

C – How IP enforcement works in some major Trade Fairs Specific Trade Fairs - Italy In Italy, only for four events provide special alternative enforcement measures : Milano : MACEF, EXPOCOMFORT and Verona : MARMOMACC, SAMOTER. Vicenza offer an expert design panel (Giurì) Such events provide an arbitration panel of IP experts with powers to order evidence collection and injunctions. The operating times are very rapid. In the other events/trade fairs, only the usual civil evidence collection tools (as in France) are available. Criminal seizures may be asked only if the violation can be considered criminal as explained before

The solution applied by Fiera Milano International Verona Fiere W W W.C A S U C C I .B I Z

The solution applied by Fiera Milano International ISSUES The solution applied by Fiera Milano International I 8 year experience MACEF: first edition regulated (Sep 2001) 2 Exhibitions regulated (3 more next year) MACEF: gift, design and furniture (bi-annual) EXPOCOMFORT: bath design and hydraulics (bi-annual) W W W.C A S U C C I .B I Z

The solution applied by Fiera Milano International ISSUES The solution applied by Fiera Milano International II Contents of the Regulation Informative service Evidence collection procedure Injunction procedure (internal) Managers 10 IP experts appointed (lawyers and IP attorneys) on duty all days during the exhibition W W W.C A S U C C I .B I Z

The solution applied by Fiera Milano International ISSUES The solution applied by Fiera Milano International III Advantages fast and reliable IP enforcement limited costs (a fixed fee per intervention) Disadvantages risk of lack of evidence/time about validity issues negative effects of an Injunction, if ordered, and subsequently the IP right will be considered null W W W.C A S U C C I .B I Z

C – How IP enforcement works in some major Trade Fairs Specific Trade Fairs - Switzerland Switzerland offers a very reputed Panel of experts in IP enforcement at Basel World. The system has worked since 1985 and is very reputed in the field of jewellery and watches. In the other events/trade fairs, the usual enforcement tools are available (civil injunctions and criminal seizures if the infringement is criminally relevant)

D – How to deal with IP enforcement measures and remedies In general The intervention of a Public Authority or a Special Enforcement Authority during a Trade Fair is almost always ex parte, so it is a real surprise for the alleged infringer. Usually there is no possibility of stopping the intervention, and it is better to cooperate and try to avoid conflicts. In specific, a good way to react against such intervention is to ask for an own IP expert to participate in the operation in order to avoid abuses by the IP owner

D – How to deal with IP enforcement measures and remedies In specific Trade Fairs - France In France, the evidence collection measure is always executed by a Bailiff during weekdays (not on week end). It is important to immediately ask to be shown the order issued by the Judge (in the French language) and examine it (if possible) with your IP expert. The execution is limited to the collection of pictures and a sample of the allegedly infringing goods. No other activities are allowed if not expressly provided into the judicial order. In particular, it is not forbidden to continue exhibiting the allegedly infringing goods.

D – How to deal with IP enforcement measures and remedies In specific Trade Fairs - Germany The German IP Courts are very efficient and may give an order ex parte even on a Saturday. The order must be executed by the bailiff, so if he is not present in the operation, the claimant’s lawyers cannot proceed even if they may have a full copy of the judicial order. There is no possibility to resist to the execution: any resistance will generate the need to involve the police. It is always opportune to have an IP expert present during the operation.

D – How to deal with IP enforcement measures and remedies In specific Trade Fairs - Italy In normal Trade fairs, the situation is the same as in France: in the majority of cases, only evidence collection orders (descrizione) will be granted. In very critical cases, the intervention of criminal authorities (Guardia di Finanza) will lead to the seizure of the allegedly infringing goods. In regulated Trade fairs (Milano, Verona) all the activities will be managed by the IP expert of the Trade Fair. According to the IP regulation, the exhibitors cannot refuse such intervention. Usually in this cases, ex officio Experts will be available for assistance of the alleged infringer.

D – How to deal with IP enforcement measures and remedies In specific Trade Fairs - Switzerland The Swiss situation can be considered similar to the German situation. In the Baselworld Fair, all the operations will be managed through an Arbitration hearing by the IP experts. In this case, it is essential to have an IP expert ready in order to assist the alleged infringer at the hearing.

_____________________________ CHINA Regulation of April 1° 2006: Complainant (owner of right or agent) Complaint materials (see question 5) Office in charge of handling complaints Suspend the display of products suspected of infringement Personnel of commerce administration departments Personnel of patent administration departments Personnel of trademark administration departments Personnel of copyright administration departments Personnel of exhibition organisers Administrative Departments of IP Executive sanctions trademark copyright patent Within 24 hours Making Judgement

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GIOVANNI F. CASUCCI Attorney at Law Director of Master ICE INDEACINA at MIP Politecnico di Milano, Member of the permanent Faculty of Politecnico di Milano External IP Expert at IPR2 program, Beijing Member of IBA, LES, AIPPI, ECTA and INTA. W W W.C A S U C C I .B I Z