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Protecting Intellectual Property Rights at Trade Shows
Trade Shows present great business opportunities but exhibiting at a show puts Intellectual Property Rights (“IPR”) at risk if not protected properly.
OF NOTE: This page addresses IPR protection at Trade Shows. To review general basics considerations on IPR, counterfeiting or grey market activity, see APPA’s website Considerations in Intellectual Property and Licensing and Counterfeiting and Gray Market Goods. This page is not intended as a substitute for qualified legal advice, but it is merely a guide to some basic considerations on how to protect your IPR at Trade Shows.
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What are IPR?
Generally there are four types of intellectual property protection.
1. Copyright: A copyright is granted to authors for individual works of authorship and other forms of creative expression. This includes literary, dramatic, artistic and other intellectual works both published and non-published. The copyright owner has exclusive rights to reproduce the work. Copyrights are registered with the Copyright Office of the Library of Congress.
2. Patent: A patent is a grant of a property right for things and processes that are useful in the real world. The right is for 20 years after the date on which an application is applied for. During that period the inventor may exclude others from making, using or offering for sale, or selling the invention. The legal description of the invention is the patent’s claim. The US Patent Office will review the patent and determine whether the invention is one that is new, before accepting the patent.
3. Trademark: A trademark is a word, name, symbol or design or slogan which distinguishes the products of one company from another. A trademark must be distinctive and is linked to a specific product or company. A “service mark,’’ is similar to a trademark and generally refers to the source of a service and not a product. Trademark protection is created through the use of the mark, or by filing the mark with the US Patent and Trademark Office.
4. Trade Secret: Trade secret protection can protect confidential information from improper appropriation and is generally enforced by the states. To consider whether something is a trade secret, courts will look at how secret the information is, the efforts made to protect the secret, the value of the information, and the amount of money or effort involved in creating the secret. The higher the cost in developing the trade secret, the more likely it will be considered a trade secret. A trade secret program, including employee confidentiality requirements to ensure this secret is protected is additional evidence of the intent to keep the information a secret.
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Protecting your IPR BEFORE exhibiting at a Trade Show
1. Register your IPR
An idea is NOT protectable and a product not registered as an IPR has no or little remedy against potential infringers. Therefore, registering a product BEFORE exhibiting at a Trade Show is key to effective IPR protection.
Scope of the protection: registration in one country DOES NOT provide protection in the rest of the world.
General international rules: A company has two options when it comes to registering IPR abroad:
To ensure full IPR protection in another country, a company can apply to register any IPR in that country. For more information about the specific intellectual property laws and requirements of individual countries, visit the WIPO Guide to Intellectual Property Worldwide.
This option can become challenging especially when a company needs to register its IPR in several countries.
However, when a country is signatory to one of the numerous IPR multilateral treaties (e.g. WTO, Berne and Paris Conventions…) the complexity of overseas filing is largely reduced; a registration in the jurisdiction designated by the treaty will grant IPR protection in all the signatory countries of the treaty. This is the easiest option and the most commonly adopted. It provides IPR protection in several countries with only one registration.
Registration in China: although China is a party to some of these multilateral treaties, a company must register its IPR with the appropriate Chinese agencies and authorities for those rights to be enforceable in China. For information on how to protect your IPR in China see the APPA webpage: Protecting Your Intellectual Property Rights in China: Guidelines
Registration in Europe: although it is possible to register in countries individually or, for EU-wide trademark and design protection, you might consider the Community Trademark (CTM) and Registered Community Design (RCD). These provide a single right that protects your industrial design or trademark in the entire EU. Both national trademarks and the CTM can be registered through the U.S. Patent and Trademark Office as part of an international trademark registration system .
2. Prepare non-disclosure and confidentiality agreements for employees to sign prior to attendance at trade shows. (patent, trade secret protection)
3. Consider whether it is appropriate for individuals outside of the organization to sign confidentiality agreements prior to disclosure of intellectual property to them. (patent, trade secret protection)
4. Advise employees in advance not to talk about sensitive business in public places. Provide employees with concrete and precise examples of what can and cannot be disclosed. (patent, trade secret protection)
5. Work with marketing department to ensure that sensitive business information is not disclosed in written materials, whereby the risks of revealing sensitive business information may outweigh the benefits of obtaining new business. (patent, trade secret protection)
6. Mark products with patent numbers, where applicable, and with trademark and copyright symbols, where appropriate, to show ownership of intellectual property. (patent, trademark, copyright protection)
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Protecting IPR during a Trade Show:
1. Avoid having non-authorized pictures taken
2. Police disclosure of intellectual property by employees at trade shows. (patent, trademark, copyright, trade secret protection)
3. In any back rooms meetings with vendors where proprietary new products are displayed, admit only select and important customers or potential customers and require anyone admitted to sign a non-disclosure agreement. (patent, trade secret protection)
Remedies against infringement at the show: little can be done at the show itself. Trade fair organizers cannot themselves determine which party is guilty of unauthorized copying. Unless there is a court decision that clearly stipulates that there is infringement, trade show organizers cannot act on behalf of (or against) exhibitors. However, the larger trade fair organizers have legal staff in place from which you can seek advice.
Specific rules in Europe and Germany:
You can register in countries individually or, for EU-wide trademark and design protection, you might consider the Community Trademark and/or Registered Community Design. These provide protection for your industrial design or trademark in the entire 28-nation EU mega market of more than 500 million people. Both national trademarks and the CTM can be applied for from the U.S. Patent and Trademark Office as part of an international trademark registration system, or you may apply directly for those trademarks from the Europe Union Intellectual Property Office . U.S. IPR owners should also note that the EU operates on a "first to file" principle and not on the "first-to-invent" principle, used in the United States.
Over 90% of products and technologies are introduced into the German market via trade fairs. U.S. companies interested in entering the German (and other international markets) are well advised to consider taking full advantage of the business opportunities presented at these events. German trade fairs also provide excellent opportunities for monitoring international infringement of your IPR. The larger trade fair organizers offer some sort of legal advice during trade fairs, either thru in-house lawyers or affiliated law firms. They are, however, not in a position to act on behalf (or against) exhibitors unless there is a court decision which clearly stipulates that such an action is legally justifiable (could be an injunction or court order). See this article on Export.gov for additional information on protecting your intellectual property speicifically at European and German trade fairs.
1) Register your IPR before you exhibit at a trade fair.
2) Register with German Customs if you believe that another exhibitor will be infringing your rights. You can find the “application for action” here.
3) Bring documentation with you to the trade fair; you must be able to demonstrate your ownership. Copies of your patent or trademark rights will suffice.
4) Be aware that German trade fair organizers do not themselves determine which party is guilty of unauthorized copying – that is left to a legal process. They are, in fact, prohibited by law from actually closing down a trade fair booth during the show. The organizers are, however, generally willing to remind an exhibitor of his/her responsibilities under the anti-piracy clause not to knowingly copy the IPR of other exhibitors – and that helps dissuade some.
5) Some organizers do a better job than others providing assistance before and during the fair. The following trade fair organizers have an identifiable IPR initiative, which goes beyond the minimum requirements for IP protection stipulated by AUMA (the German trade fair association), showing their commitment to protect the interests of IPR owners among their exhibitors:
Messe Frankfurt: Messe Frankfurt Against Copying In 2006, Messe Frankfurt became the first trade fair organiser worldwide to launch an initiative against brand and product piracy: “Messe Frankfurt against Copying”. This initiative aims to ensure that exhibitors and visitors are fully informed and advised about the registration and assertion of intellectual property rights. That is why it offers an information stand at selected trade fairs within Germany and abroad. Here, experts are on hand to answer questions pertaining to the topic of intellectual property rights and advise exhibitors on what to do in the event of infringement
6) Take steps to protect your trade secrets (anything that has commercial value because it is secret, such as pricing methods, key ingredients, customer lists.) To make a claim against a violator, you need to show not only that the secret has value and that its value derives from the fact that it is secret. You also need to show that you have taken reasonable steps to ensure its secrecy. This may mean restricting access to only those parties with a clear need to know AND requiring those persons with access to sign non-compete and non-disclosure agreements.
If you believe another exhibitor is copying you, here are some steps you may wish to take:
1) If you believe in advance of a trade fair that a competitor may infringe your already-registered-in-Germany rights, contact German Customs, register with them, and inform them about your suspicion. German customs authorities have the right to seize infringing products, sometimes even at the fairgrounds. Contact the U.S. Commercial Service in Frankfurt for further information.
2) At the trade fair, check out exhibitors you suspect of copying. If you see an exhibitor you suspect of copying your IPR, try to obtain a sample and/or brochure plus their contact information. Contact the fair organizer’s legal department, if available, to discuss your options and seek their assistance. Some fair organizers have staff readily on hand, who are able to provide counseling and other help. Also inform the U.S. Commercial Service; we cannot provide legal counsel but can help you consider options and contact a lawyer if advisable.
3) Declaration of Forbearance ("Strafbewaehrte Unterlassungserklaerung”: The lawyer can work with you to draft a Declaration of Forbearance and serve it on the alleged copier. Upon accepting it, the alleged copier agrees to voluntarily withdraw product(s) in question, remove (or black out) any references in catalogs, etc., as well as pay the lawyer’s fee for drawing up the Declaration of Forbearance (starting at about 200 Euros).
4) If the exhibitor refuses to sign, a Preliminary Injunction (“Einstweilige Verfuegung”) may be necessary. The procedure entails a lawyer taking proof, provided by the U.S. exhibitor (copies of registrations, letters, faxes, or e-mails showing that the alleged copier had previously procured samples from the U.S. exhibitor, etc.) to a judge. The preliminary injunction prohibits the alleged IPR-copier from exhibiting or selling the products in question, until the issue becomes a court case in which rights are clarified.
5) Some trade show areas are legally declared a “customs border area,” where seizures can be made before an infringing exhibitor is served with orders: Hannover, Frankfurt, and Leipzig trade fair grounds enjoy this status.
Specific rules in China:
To better protect IPR at trade shows in China new rules have been promulgated in 2006.
For instance, if a trade fair lasts three days or longer, trade fair organizers are obliged to establish a complaint center for IPR related issues. If the trade fair lasts only one or two days and the organizers do not provide a complaint center, the exhibiting company can check whether local enforcement authorities will be present at the trade fair. If not, they may at least provide a contact person who can be addressed in case of infringements.
For more information see this article on Protecting IPR at China Trade Fairs and this article from the World Intellectual Property Organization.
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APPA Advisor: Safeguarding Your Intellectual Property At Global Pet Expo by Shari L. Klevens: http://www.americanpetproducts.org/newsletter/january2007/legal_briefs.html