LEGAL BRANDSTOCK LEGAL EXPERT ADVICE FOR ALL IP MATTERS

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1 BRANDSTOCK LEGAL EXPERT ADVICE FOR ALL IP MATTERS

2 The Brandstock Group of companies is one of the world s leading and fastest-growing providers of Intellectual Property services that harnesses innovative IT and professional specialist expertise. A startup company in 2000, Brandstock now numbers over 100 employees in four countries, with a particularly strong standing in Europe, and an increasing presence in the US and Asia. Brandstock Legal focuses on a broad range of IP protection services including full-service IP portfolio management, litigation and other IP enforcement such as anti-counterfeiting programs. In conjunction with other Brandstock partners, Brandstock Legal also carries out domain name registration and management, IP valuation, and IP services cost management. All these services are enhanced by Brandstock s specialization in pricing, cost transparency and management of large-scale IP projects, such as global searches, applications, renewals and assignments. Further background on Brandstock can be found in the Appendix. Custom-made IT, particularly web-based interactive IT, is the basis of and the differentiator for Brandstock s services. All IT developed and maintained by Brandstock is completely secure and complies with BSI IT-Protection, a catalogue issued by the German Federal Office for Information Security, and so meets all relevant ISMS and ISO/IEC standards. Furthermore, all systems and processes are regularly reviewed and audited by an external independent security officer. Brandstock focuses on providing IP services of the highest standard that also represent excellent value for money, and works with a network of 250 preferred associates in over 200 jurisdictions. This network has been established and honed over a 10-year period, with firms chosen on the basis of professional excellence and value for money. Brandstock is open to clients to choose agents from this network or to retain their own agents there is complete freedom of choice. Brandstock Legal combines its professional expertise with that of these associates to provide the highest-quality IP advice available in the marketplace today. Contents Scope of services Trademark and domain name searches Trademark and design filing and prosecution Portfolio management and renewals Trademark opposition, cancellation and related procedures Litigation, anti-counterfeiting and other IP enforcement IP licensing and other commercialization of rights IP valuation Page I strongly believe that Brandstock Legal s professional services can enhance any company s IP portfolio and lead to considerable cost savings. Our clients endorse this and Brandstock is proud that they refer to us as their trusted partner in IP matters. I hope that Brandstock will have an opportunity to work with you. If you would like more information, there are brochures available on each of the services offered by Brandstock and also at Appendix The Brandstock Group 11 Dr. Volker Spitz General Manager, Brandstock Legal 02 brandstock legal brandstock legal 03

3 SCOPE OF SERVICES TRADEMARK AND DOMAIN NAME SEARCHES Brandstock Legal provides a wide range of Intellectual Property services to medium-sized and large organizations in all sectors worldwide. Based in Munich, with English, German, French and Italian as its working languages, Brandstock Legal is valued by clients for its practical and costeffective solutions to their IP needs. Expertise developed over 20 years allows Brandstock Legal to outline, in the most time-efficient way, all possible options for managing any IP issue and always with a recommendation for a particular course of action. While its practice is guided by this experience, Brandstock Legal realizes that each case is different, both on its facts and because any industry has particular regulations and concerns that must be addressed in finding an appropriate solution. All work is carefully tailored to the specific client and the commercial issues that the client faces. Brandstock Legal works with its clients on all aspects of the life cycle of trademarks and designs from developing and clearing new rights for use in the marketplace, registration of rights, effective commercialization through sale or licensing, to enforcement of rights against other businesses and protecting rights against attack by others. In addition, we handle litigation and other enforcement in relation to patents and domain names, as well as lawsuits for unfair competition. In Brandstock Legal handles all matters; elsewhere, respecting local laws, we work with more than 250 lawyers and attorneys in more than 180 jurisdictions. The Brandstock Preferred Agent Network is subject to ongoing formal quality control and feedback to ensure that advice spanning more than one country is consistent, and that all advice is of the same high quality that Brandstock demands of its own lawyers and IP professionals. At the same time as providing advice of the highest professional quality, Brandstock Legal has the unique advantage of drawing on the cost-saving techniques, total cost transparency and the innovative proprietary IT that identifies the Brandstock Group as a whole. The fusion of all these elements means that Brandstock Legal demonstrably provides the high quality of service and cost tracking that clients need to manage all their IP matters and budget. This is unique for a law firm. Through data obtained via the IP CostCalculator and other projects, Brandstock Legal makes available to its clients the most comprehensive and constantly updated data on IP costs available anywhere in the world. Further information on the Brandstock Group is available at Comprehensive advice on new trademarks before launch is critical. Brandstock Legal works with name creation and other agencies to help ensure that a new trademark is suitable and protectable for the product. We advise on whether the trademark can be used without infringing other businesses rights and whether it can itself be protected by registration to stop other businesses using the same or a similar trademark. Brandstock Legal itself clears trademarks in, Austria and Switzerland, and can provide clearance strategy and clearly interpreted results for searches in more than 180 countries around the world. In 2005, Brandstock was the first IP service provider to set up an interactive online platform for the delivery of trademark search results. This platform delivers the highest degree of search co-ordination and allows clients to understand at a glance total global risk in connection with all trademarks searched. Clients can also drill down into candidate trademark, conflicting trademark and/or country specific details where desired. Domain names have now been added to the search capability and, for trademarks, Brandstock provides both pre-screening and full availability searches that include local agents opinions. Clients can view the prices of all agents, including its own preferred agent network, so that they can choose and instruct which agent should carry out the searches in order to know exactly how much each search project costs. Clients can expect to make significant savings on any search project compared to costs for searches that are not subjected to this initial cost review. Brandstock Legal lawyers review all full availability search reports. Opinions from local agents are written in English, as are Brandstock Legal s search summaries, and all supporting documentation is stored on the platform. Clients can order reports, add comments, and sort data by reference to various criteria such as risk, country and conflicting trademark at any stage in the search process as well as tracking all amendments they have made. 04 brandstock legal brandstock legal 05

4 TRADEMARK AND DESIGN FILING AND PROSECUTION In an increasingly budget-driven environment, trademark and design filing programs need a comprehensive strategy to deliver commercially relevant results in a cost-effective and timeefficient manner. Brandstock Legal has extensive experience in working with clients in order to understand the commercial needs behind proposed filings and then to suggest a strategy that takes account of budget, launch timings and any industry specific requirements, such as regulatory approvals, as well as minimizing the likelihood of objections. Strategies are presented to clients for discussion in an easy-to-understand Excel spreadsheet before implementation. Once a strategy is approved by a client, Brandstock Legal s method of implementation simplifies the administration and reduces the cost of large-scale trademark and design filing programs. It also reduces the usual time taken to file the applications: for example, we filed 3,000 national trademark applications for a single project in 2 weeks and, for another project, filed 1,000 Community Trademark applications in a single day. Brandstock Legal manages the filing program until official reports are received from registries, though it can retain responsibility until the end of the registration process if needed and can manage the portfolio later on. Brandstock Legal has an easy-to-use propriety online database which has been developed to provide comprehensive trademark data and financial tracking for both Brandstock Legal and our clients. It is customizable to each clients requirements. Clients can also review the project s progress at all times, as Brandstock Legal constantly updates the portal and is itself using the data as entered to work with. Brandstock Legal provides project front-end certainty and full transparency of costs and pays the multiple invoices that are submitted by agents worldwide, billing the client in just three invoices in either euros or US dollars. Clients can see agents charges in order to select the most cost-effective agent for the task, with typical savings of 30% to 40% in each filing project. Further savings are available as Brandstock Legal files direct at IP registries around the world, where local laws allow this. The Brandstock Legal proprietary online portal has a powerful reporting function and the data can be exported by the client or Brandstock can provide regular reports. PORTFOLIO MANAGEMENT AND RENEWALS In addition to helping clients create their trademark and design portfolios, Brandstock Legal can manage those portfolios on a day-to-day basis, taking responsibility for informing the client about and managing all matters that occur in connection with the IP rights in that portfolio. One important element of this is trademark renewals. Brandstock has developed an integrated secure trademark and design renewals process that allows clients to save 30% to 40% on their annual renewal bill and to reduce administrative burden at the same time. There is a custom-made web-based database that provides comprehensive data on pricing and renewals status that both Brandstock and clients have access to. The database is available at all times. Clients choose an agent for renewals in each country with the benefit of full and transparent cost data, split between professional and official fees that are independently verified by Brandstock. The database also provides full financial tracking throughout the renewals cycle, and the costs are quoted and guaranteed in either euros or US dollars, at the client s choice. The multitude of agent invoices sent at unpredictable intervals throughout the renewals cycle are replaced by a single monthly or quarterly invoice issued by Brandstock Legal. After each trademark renewal, the updated data is transferred into to the Brandstock s client-specific database together with an electronic version of the renewal certificate. TRADEMARK OPPOSITION, CANCELLATION AND RELATED PROCEDURES Brandstock Legal advises on and manages all disputes in relation to clients trademark and design registrations, both in the German Patent and Trademark Office (DPMA), the German Patent Court, the European Trademark Office (OHIM), the General Court of the European Union and the European Court of Justice. Brandstock Legal also handles such matters in other countries via local attorneys, particularly multi-jurisdictional issues where consistent strategy is key. We have extensive experience in negotiating settlements and co-existence agreements, and can generally advise clients how to manage trademark and design disputes. We coordinate our advice in relation to registry disputes with any actual or potential litigation relating to the same or related IP rights. 06 brandstock legal brandstock legal 07

5 LITIGATION, ANTI-COUNTERFEITING AND OTHER IP ENFORCEMENT Brandstock Legal provides litigation advice and representation in and, via our Preferred Agent Network, in more than 180 other jurisdictions. In addition to trademark and unfair competition litigation, Brandstock Legal provides patent and design litigation services. IP VALUATION Corporations need valuation of their intangible assets, including Intellectual Property, for a number of purposes including sale and purchase of assets, mergers and acquisitions, transfer pricing, purchase price allocation, impairment tests, loan security, rating optimization, sale and leaseback, licensing, budget allocations, documentation of value creation, and quantifying loss and damage in legal proceedings. In, Brandstock Legal handles anti-counterfeiting and anti-piracy cases in the courts, as well as registering rights with Customs authorities in order to allow confiscation of products at German borders. Outside, anti-counterfeiting enforcement action varies greatly from country to country and there is usually more than one type of action available. Counterfeits pass over borders, often making multi-jurisdiction enforcement necessary and requiring action via Customs. Brandstock Legal has extensive experience in co-ordinating multijurisdictional actions and works closely with Brandstock Enforcement, specialized in anti-counterfeiting practise with focus on China. Together we can advise on which method of action suits the circumstances, how cost-effective each is and the impact that it is likely to have on the availability of counterfeits in the marketplace. Brandstock Legal can arrange for online and offline marketplace monitoring to provide details of products that are counterfeited, and advise on a suitable strategy for managing the results of such monitoring. IP valuation carried out by accountancy firms often takes too long to be done at regular intervals and is at a cost that is prohibitive to all but the largest companies. Brandstock has its own valuation consulting service and also has developed a trademark valuation software, BrandValue, to provide valuation at an affordable price and within a reasonable time frame. Reports can be produced within two to five weeks, compared to the fourteen weeks taken by the traditional methods, and can be sorted and reported by reference to a wide selection of accounting criteria. All valuations comply with both US-GAAP and IAS/IFRS accounting standards and BrandValue software is certified according to ISO/IEC IP LICENSING AND OTHER IP COMMERCIALIZATION As an IP portfolio matures, the rights contained in it can be exploited to enhance or to create commercial opportunities: they can be sold, licensed or otherwise used to create value for the business that owns them. Brandstock Legal can advise not only on possible ways of extracting value from IP rights, but also to liaise on a confidential basis with potential partners worldwide to find the right partner for such commercialization. Brandstock Legal can also advise on negotiations with commercial partners and draft the necessary contracts to finalize the deal, taking into account fiscal, economic and legal considerations, as well as how to manage any ongoing contractual relationship. 08 brandstock legal brandstock legal 09

6 APPENDIX - THE BRANDSTOCK GROUP The Brandstock Group is a provider of uniquely broad-ranging and powerful Intellectual Property services with a particular focus on brands. The Brandstock Group now employs over 100 people from 17 countries. They are professionals in a range of disciplines, not only lawyers, and are deployed within the Group to harness their particular expertise to ensure that at all times Brandstock provides fast, professional and cost-effective solutions to its clients. Headquartered in Munich, with offices in Singapore, New York and Paris, the professional expertise is enhanced by Brandstock s web-based software products resulting in the accountability, flexibility, business efficiency and all-round service so valued by Brandstock clients. Brandstock clients, both international blue chip companies and small to medium-sized enterprises, state that they value highly the relationships they are able to build with Brandstock s international teams of lawyers, paralegals and other in-house specialists. THERE ARE FIVE COMPANIES IN THE BRANDSTOCK GROUP, EACH FOCUSING ON A DIFFERENT ASPECT OF INTELLECTUAL PROPERTY MANAGEMENT: Brandstock Services AG Searches and clearing Renewals Recordal services Agent fee comparison website (IP CostCalculator) and benchmarking projects Brandstock Legal GmbH Trademark and domain name searches Trademark and design filing and prosecution Portfolio management and renewals Trademark opposition, cancellation and related procedures Litigation, anti-counterfeiting and other IP enforcement Customs action & border control EU IP Valuation IP Licensing and other commercialization of rights Brandstock Domains GmbH Monitoring and audits Legal and domain services Brandstock Enforcement Pte. Ltd. Anti-counterfeiting solutions and strategy Investigations Administrative, civil and criminal legal proceedings against counterfeiters Brandstock Valuation GmbH Valuation of intangible assets (ISO certified) Market-oriented valuation (IAS 38 and IFRS 3 standard) Trademark valuation software To see what our clients say about us please visit All these companies have access to Brandstock s honed network of 250 firms of international lawyers and other Intellectual Property professionals that provide specialized advice in individual jurisdictions. The network allows Brandstock to choose the right professional for the particular client matter, and to obtain the services at a competitive price. 10 brandstock legal brandstock legal 11

7 Brandstock Services AG T F welcome@brandstock.com Office USA 521 Fifth Avenue New York, NY T welcome@brandstock.com Brandstock Legal GmbH T F legal@brandstock.com Brandstock Valuation GmbH T F valuation@brandstock.com Brandstock Domains GmbH T F domains@brandstock.com Brandstock Enforcement Pte. Ltd. 3 Pickering Street Unit Singapore T enforcement@brandstock.com PRINTED 2013 SIMPLY CLEVER SOLUTIONS