NCC AB is a Swedish multinational construction and real estate company, with operations in Scandinavia as well as Germany and the Baltic countries.
To clarify its offering regarding residential development, NCC intended to bud of NCC Housing from the group and instead create a separate company and brand. Together with our sister company, naming agency Skriptor, we were commissioned to develop a brand and protect associated trademarks and domain names to be used in eight markets. The project was initiated in September 2015, and already then, we knew that we were working against the clock – the new name would be decided, filed and registered by April 1, 2016.
Skriptor started the project by creating an appropriate name. Through a structured and strategic approach, they created 25 name suggestions, which later became ten. These ten name suggestions were linguistically screened by Skriptor, and we carried out legal research, in all relevant markets. By looking at both the linguistic aspects and legal aspects (such as registrability), in combination with the access to domain names, the name suggestions become both commercially viable and strong from a legal perspective.
Through the process, the final choice of name became Bonava – a combination of the Swedish words “bo” (to live) and “nav” (a hub).
After the decisions were made, we started with registering both the trademarks and the domain names. Since we had done thorough research, the process went according to plan. As this was an international project, our established strategy resulted in 40 domain name registrations and 13 trademark registrations in the EU, Norway and Russia. Thanks to a close cooperation with our client and swift action in all phases of the project, we managed to meet our deadline.
The entire project was handled strictly confidential and all intellectual property rights were filed with a different company name in order not to disclose that this was a project of NCC. When the press release was sent out and the project was proclaimed, April 12, 2016, we transferred all the registered rights to NCC.
This is NCC’s own words on Bonava:
“Bonava now becomes one of the leading residential developers in Northern Europe. Bonava originates in NCC and has created homes and residential areas since the 1930s. Today, Bonava has 1,400 employees with operations in Sweden, Finland, Denmark, Norway, Germany, St. Petersburg, Estonia and Latvia, with a turnover of EUR 1.3 billion.”
"Bonava now becomes one of the leading residential developers in Northern Europe"
Under the service name Brand Entity, we, Groth & Co, have a unique collaboration consisting of the naming agency Skriptor and the design agency Loogo and offer joint services to help clients through the entire process of creating, protecting and designing a new brand.
Our client, SALAB, is a company that develops and manufactures customer-specific skin, hair, and styling products, as well as several special products in health care and personal hygiene. SALAB recently invented a new salt-based deodorant, and required assistance in the process of introducing it to the market – to create a name, secure IP rights, and give it a visual identity.
The brand creation process followed our standard strategic method; Skriptor created a large number of potential names based on the client’s brief and the potential names were then pre-screened and checked linguistically by Skriptor’s international network of linguists. Thereafter, our trademark specialists conducted a full legal search on all key-markets, registers and online on a handful names that the client preferred. Once the client finalized the brand name, we filed trademark applications in the relevant classes on the relevant markets, as well as registered a number of domain names for the client. Given the urgency with launch in mind, the client also chose to register a backup trademark in case of unexpected oppositions.
Once registered the client could chose a brand name that was – both commercially viable and strong from a legal perspective, and ready to use in all of the relevant markets for the client.
After the applications were filed, Loogo started their work with the visual identity and design for the brand name. Loogo also produced the graphic package design such as labels to the entire line.
The entire process, from brief to a registered and designed brand name, ready for launch, was five months.
A large investment company was interested in buying a Swedish engineering company, Roplan International AB, which was up for sale by the founder. Through the general law firm Hamilton, we, Groth & Co, were engaged to do an IP Due Diligence of the engineering company’s patent portfolio.
The patent portfolio at hand consisted of 27 patent families in Europe, USA, China, Japan and Korea. Our task was to conduct an IP Due Diligence on behalf of the potential buyer, and more specifically to find flaws in the patent portfolio, to be used as leverage in the negotiations of the purchase price.
Our IPDD followed our internally developed standard investigation method, where we first looked at the formalities of the portfolio for example, ownership of the patents, licensing agreements and agreements with the inventors. Secondly, we looked at the quality and substance of the patent portfolio which included factors such as the patents’ relation to the actual products, the strength of the patents and the patent claims in relation to prior art.
We completed the IP Due Diligence successfully and the parties could later reach an agreement with a purchase price of approximately 30 million Euros.
Our client, the Swedish metalsmith Bengt Wulf, designed a chimney cap and upon application he was granted a design registration in 2005. A few years later he used the design registration as basis for a cease and desist letter directed at a competitor (JLM) for infringement. As a counteraction the competitor sued trying to invalidate the design registration. We represented Wulf in the case regarding the validity of the design registration.
The core issue of the case was whether Wulf’s design met the requirement of distinctiveness and novelty. That is, if the knowledgeable user’s overall impression of the product differs from prior art.
The first instance, The District Court, said no, Wulf’s chimney cap didn’t differ enough from prior art and the registration should be invalidated based on lack of novelty. We appealed to the Court of appeal but they did not grant Wulf leave to appeal. So we appealed that decision to The Supreme Court and they agreed with us – the Court of appeal was forced to try the case.
Once the Court of Appeal did try the case on the merits they changed the district court´s outcome, and we were successful. The court stated that our client’s design registration was valid, and that the invalidation case was dismissed. The court stated that the functionality of the chimney cap was possible to achieve with alternative designs, and that the design therefore was not solely based on a technical solution of the product. The court also stated that the design does not lack novelty and distinctiveness.
That decision was appealed by our counterpart and, after more than a year of contemplating, the Supreme Court actually granted a leave to appeal. This was the first time in eleven years that the Supreme Court would handle a design case, and we started to prepare the procedure in the Supreme Court.
However, during the preparations of the procedure, the parties reached an extrajudicial settlement and the appeal was withdrawn.
"This was the first time in eleven years that the Supreme Court granted a leave to appeal for a design case"
SKF is a leading multinational technology company. Most famous for its bearings SKF was founded in Sweden 1907 and is now operating in more than 130 countries. With its headquarters still in Sweden SKF is one of Sweden’s biggest trademark owners, having thousands of registered trademarks globally.
Having a trademark portfolio the size of SKF:s generates a lot of costs for renewals.
We conduct proactive trademark portfolio refinement for SKF, looking into the trademarks that are to be renewed within the next following years. In the latest refinement process we conducted work on the trademarks that were to be renewed during 2014 and 2015, a total of 2750 registrations. Our goal was to streamline the portfolio, and also to make it more cost efficient for the client. But at the same time reassure the scope of protection and value of the portfolio. The most important action we took was mapping national registrations with international registrations, to see which national registration that could lapse but instead designate the corresponding country in the international registration. With SKF being one of Sweden’s biggest trademark owners this is a large task, but also a task that can create major cost reduction benefits for the client. This action led to numerous name changes, recordals of seniority and new designations. At the same time as numerous national trademark registrations were decided not to be renewed. With our staff of highly-skilled and well-educated paralegals, working as part of our client teams with our lawyers, we can perform these types of actions in a cost-efficient way for our clients.
"With our staff of highly-skilled and well-educated paralegals, working as part of our client teams with our lawyers, we can perform these types of actions in a cost-efficient way for our clients."
Plantagon International AB operates in the urban agriculture sector and is a world leader in vertical farming. Their vertical greenhouses reduce the need for energy, water and pesticides, and make use of emissions of carbon dioxide, CO2, and the waste heat from homes, industries and offices. Plantagon is a Swedish company but their concept creates the greatest benefit in multimillion cities with high population density, particularly in Asia.
Plantagon sought capital for international expansion. The company’s biggest asset is its IP portfolio, and it was the company’s IP that would be the basis for funding. nevertheless, Plantagon lacked a defined value of their intellectual assets. Traditional methods based on cash flow is not applicable on this type of company where the assets consist primarily of IP. With that background, we were asked to identify the monetary potential of Plantagon’s IP portfolio.
By applying qualitative and quantitative methods, we investigated about a dozen value indicators relating to, among other things, Plantagon’s IP portfolio, organization and their business environment. We combined the outcome of these indicators with an IP Due Diligence and a Freedom-to-Operate-analysis, to identify the legal risks regarding the IP portfolio. The IP portfolio’s monetary potential was then determined by weighing the IP portfolio value indicators against its legal risks, given an existing position and a number of future conditions. Plantagon could then start substantive negotiations with investors and licensees, both in Sweden and on other continents. Groth’s work was carried out in a very professional way and the result is more concrete than when we previously used one of the three major accounting firms [in Sweden] for similar work. We wanted “no-nonsense” material without exaggeration, material that our stakeholders could understand and believe in. We got what we asked for, and benefit greatly from it in the ongoing development of Plantagon. /Hans Hassle, CEO of Plantagon International AB
"We wanted 'no-nonsense' material without exaggeration, material that our stakeholders could understand and believe in."
Sveriges Television (SVT) is the Swedish public service television company. Since 1959 SVT has been broadcasting the immensely popular music competition Melodifestivalen. Melodifestivalen is the Swedish qualification for the European Song Contest, and the programme is each year one of the most watched TV programmes in Sweden. The record was set in 2006 when the finale was watched by 4.2 million viewers. Every year since 2000, about 85% of the Swedish population between 3 and 99 years has watched any of Melodifestivalen heats or final programmes. Melodifestivalen is a registered trademark, owned by SVT, for a large number of goods and services, including entertainment, information about entertainment, and presentation of live performances.
Kanal 5 AB (Channel 5) filed two trademark applications for Schlagerfestivalen and Schlager-SM with the Swedish Patent and Registration Office (PTO), which the PTO approved. The trademark applications included the same goods and services as SVT’s trademark registration Melodifestivalen, and they also have a similar meaning in Swedish. Channel 5 now owned two registrations that competed with the beloved trademark Melodifestivalen.
The new trademarks could create confusion for viewers. At the request of SVT we objected against the registrations Schlagerfestivalen and Schlager-SM, and demanded that they be revoked. We submitted extensive and strategically selected arguments and evidence in SVT’s advantage, which demonstrated the television programme’s spread and the trademark’s awareness. This was countered by Channel 5 through their legal representatives.
With our argumentation SVT was successful in the disputes. The PTO noted in its decisions that Melodifestivalen is an established trademark which is well known in the so-called relevant public. Furthermore, the PTO stated that Melodifestivalen thereby has enhanced protection regarding entertainment, information about entertainment, and presentation of live performances. The PTO noted that Schlagerfestivalen is visually, phonetically and by association similar to Melodifestivalen, at the same time as it relates to identical goods and services. Therefore, there is a likelihood of confusion between the trademarks. The PTO decided to revoke Channel 5’s registration for Schlagerfestivalen.
Regarding Schlager-SM the PTO however stated that the trademarks are not confusingly similar. However, the PTO stressed that Melodifestivalen is known in a substantial part of the relevant public and that it would make a link between the trademarks, which are conceptually similar and have a strong connection regarding entertainment. Schlager-SM would draw unlawful advantage of the reputation of Melodifestivalen, a reputation that SVT has built over many decades. The use of Schlager-SM would also be detrimental to the distinctive character of Melodifestivalen. With this in mind the PTO also revoked the registration of Schlager-SM regarding entertainment, cultural services, and artistic services.
"Since Melodifestivalen is so well known among the Swedish population we could through arguments and evidence walk away successful from the disputes."
Saab Automobile Parts AB was the former name of a global spare parts and logistics company. The company has been in business for over 60 years and it markets, sells and distributes Saab Original spare parts in over 60 countries.
The company planned to expand both the client base and product line to include spare parts for other brands of cars as well. In addition, the company would start additional logistics services and technical services. To accomplish this, they chose to change its name to Orio AB.
For a name change of a company, there is a lot that must be right. The new name will be used in all relevant markets, including the internet. Therefore, it is necessary to have domain names in mind early in the process. .COM is a fiercely competitive top-level domain where it can often be difficult to find available domain names. Sometimes, as in this case, the availability of domain names is crucial to the company and it is important that the assets are secured in the correct order and at the right time.
When a company changes its name, it is important to be proactive. With regard to domain names, we made research about any new name suggestions to determine their viability on the internet. We reported the results of the researches back to the client for them to then make their decision. When the client made their choice of brand, we created a strategy for domain portfolio and assisted with registration, negotiation and transfer of a number of selected domain names. Some domain names were available and could be recorded directly, while for some others we had to negotiate. The .COM domain was the most difficult domain to secure, as it is the most popular top-level domain and many domain names are already assigned. Therefor a comprehensive secondary market emerged. In this case the .COM domain name was already assigned but after negotiations with the owner, we were able to take over the domain. The new company Orio AB now has a number of strategic domain names in its IP portfolio, which together create good potential for a strong presence on the internet. We also handled trademark issues related to the name change. Going forward, we will conduct domain watching services in more than 220 top-level domains for new domain names that are close to the ones we have registered on Orio’s behalf. The aim is to detect possible intrusions in a timely manner in order to take action against them.
"If your company decides to go for a name change, it is important to think about domain names early in the process. It affects both your choice of name as well as the scope of protection on the Internet."
Aura Light International AB provides lighting that is smart, sustainable, economical, long lasting, high quality and environmentally friendly. The company was founded in 1930 and has an annual turnover of approximately 70 million Euros. The head office is situated in Sweden with established sales operations in eleven other countries. Aura Light’s vision is to become the global leading partner for sustainable lighting solutions.
In 2012 Aura Light decided that they wanted to rebrand and change their graphic identity. The aim was to better adapt to the market and create an identity that reflected the future of lighting solutions.
Aura Light operates in a highly competitive industry and on a global market and therefore their IP assets play an important role in their strategic expansion. Our task was to ensure that their IP continued to create competitive advantages and contributed to the success of the company, even after their re-branding. Changing a company’s brand is an extensive and expensive process so it is important to minimize the risk associated with the project.
Aura Light engaged a design agency to develop proposals for the new graphic identity and logo based on market research. We received three proposals to evaluate from the design agency. We initiated a strategic process with legal investigations and analyses to determine which of these proposals would create the best conditions for the future. To eliminate future problems and create maximum flexibility for Aura Light we also examined the existing IP rights of competitors and resellers on all of Aura Light’s current and future markets. Next, we analyzed the results and concluded that one of the three proposals was significantly stronger than the other two. The strongest proposal was presented to the Aura Light board of director, who soon adopted it.
Step two in the process for us was to complement existing IP assets with the new graphic identity. Together we reviewed the current markets for sales, production and transit, and draw up a strategy for trademark registrations. Thanks to the proactive groundwork, Aura Light today has their new identity protected on a global market.
"By working closely with Groth & Co at an early stage and with their legal investigations and analyses, we secured the project's success and created IP assets for the future."
Our client works with large infrastructure projects all over Sweden.
The client received a warning letter from a competitor who claimed that our client was infringing one of their existing patents. The warning letter made a reference to the patent at hand and demanded that our client immediately cease the alleged infringement. The warning letter was written by a lawyer at a renowned IP law firm and contained a threat of legal proceedings and claims for damages, but also an “offer” for a settlement, based on a large compensation from our client to the competitor.
After careful strategic considerations we decided to question the validity of the competitor’s patent. Instead of “buying out” and admitting any infringement we initiated investigations of the counterpart’s patents. Our goal of course was to find prior art technology at the time when the patent application was filed. We could then use this information to invalidate the counterpart’s patents and thus make the warning letter irrelevant. With our in-house experience and expertise in performing validity searches and our ability to analyze the results of such a search, we succeeded in finding relevant technology that was known prior to the filing of the counterpart’s patent application. This means that the counterpart’s patent was falsely granted and therefore had no legal effect. The patent simply did not meet the requirements of novelty in order to obtain exclusive rights to a technical solution, i.e. a patent. We confronted the counterpart with our analysis, after which they dropped not only the Swedish patent but the entire patent family and withdrew the claims for damages from our client. Our client is now able to freely use their technology without any risk of new claims from the competitor.
"With creativity and careful analysis of known technology our partner Groth & Co managed to show that the counterpart's patent was invalid"
Henkel manufactures and sells its product OSiS + DUST IT through its subsidiary Schwarzkopf. OSiS + DUST IT is a light powder that is used to give hair extra volume and firmness. The product is very successful in the Swedish market and one of the main sales channels is through professional hairdressers and hair salons.
Henkel had problems with counterfeit goods, in particular OSiS + DUST IT, imported to Sweden. A large proportion of these were addressed to professional hairdressers. Some of the counterfeit goods were of such poor quality that they could cause injuries for the end-user.
By applying for customs surveillance and through close cooperation with the customs officials, we managed to stop many of the counterfeit goods from coming into the country. Toghether with Henkel, we were also able to hold on to suspected goods and contact the importers who had ordered the counterfeit goods. This was all done very quickly to prevent these potentially dangerous products coming out onto the market. Through our joint efforts, we have succeeded in drastically reducing imports of counterfeit goods for Henkel. What is even more significant is that imports of counterfeit goods to professional hairdressers has, in principle, ceased completely.
"By customs surveillance we managed to stop many of the pirated goods from coming into the country."
IP Action Plan™
The American pharmaceutical company Pfizer aquired the former Pharmacia in 2002 and thereby took over an extensive and valuable IP portfolio. With the takeover, Pfizer became the world’s largest pharmaceutical company.
In connection with the acquisition, Pfizer needed to register itself as the owner of the newly aquired IP assets with the local trademark authorities in 130 countries. This meant that 24,468 assets had to be assigned on a global market. We at Groth & Co were assigned to coordinate and execute all of the changes.
Through our international network of partners, we created a global team of local IP law firms. By centralised coordination, instructions, and with the help of tools we had developed ourselves, each local agency was assigned to make the changes in their jurisdiction. All of the work done locally was administrated and controlled by us before reported to Pfizer. The project involved thousands of official documents, and each market has its own set of rules that needed to be considered. Extensive work of this type is done to secure the global control and the value of the assets. Pfizer was able to strengthen and optimize its entire IP portfolio through our common effort.
"24,468 newly purchased IP assets should be coordinated in 130 countries."
Plantagon International AB was founded to meet the challenge of producing food for the earth’s growing population. It is estimated that by 2050, 80% of the world’s population will live in cities. Plantagon’s concept is to cultivate in urban environments, that is to say, to produce and deliver fresh produce where the consumers live. Plantagon operates in the urban agriculture sector and is a world leader in vertical farming. Their vertical greenhouses reduce the need for energy, water and pesticides, and make use of emissions of carbon dioxide, CO2, and the waste heat from homes and industry. Plantagon has won numerous awards and has recently been named in the Red Herring Top 100 Global Awards as one of the world’s most innovative companies.
Plantagon realized they needed a strategic advisor in intellectual property to convert into valuable assets their vision of urban farming and the knowledge capital that was inherent to their concept. These assets will ensure the future of the company and its vision.
Groth & Co provided both strategic and tactical advice to Plantagon and ensured that IP became a natural part of Plantagon’s business strategy for global expansion. Through our goal-oriented strategic IP work, we strengthened the project’s prospects for future global success, and with long- term international cooperation with countries like China, India and Singapore we created the foundation for future success.
"IP became a natural part of Plantagon’s business strategy for global expansion."
Nycomed is a pharmaceutical company that was founded in Norway in 1874 and is today owned by the Japanese pharmaceutical company Takeda Pharmaceutical. The company’s focus is in therapeutic areas such as metabolic diseases, osteoporosis, oncology, heart / vascular, CNS diseases, inflammatory and immunological diseases, lung diseases and pain. Today the company operates in 70 countries and ranks number 12 in the world in sales of prescription drugs.
Groth & Co has a unique collaboration with our name-creating sister company Skriptor. Together we can create trademarks that are commercially viable and strong from a legal perspective.
It normally takes 10 to 12 years to develop new drugs and it is a resource-demanding process. It is therefore essential to ensure Return On Investment through intellectual property rights, and thus optimize the investments made. In late 2009, Nycomed was ready to launch a new drug against osteoporosis in the form of an effervescent tablet that dissolves in water. Skriptor and Groth & Co were assigned to create an IP asset in the form of a trademark for the global market.
Through a structured and strategic model, over 600 name proposals were created. These quickly became 125, which then became 25. The 25 name proposals were carefully analyzed for 35 selected markets. The names had to work linguistically in the respective languages, be registrable in all of the countries and admittable by regulatory authorities in both the US and Europe. The result of this process was the name Steovess – a strong trademark both commercially viable and strong from a legal perspective, and ready to use in 35 markets.
"Groth & Co and Skriptor are together able to create trademarks that are commercially viable and strong from a legal perspective."
SSAB is a leading producer of high strength steel. Production takes place in Sweden and in the US. Processing and finishing of the various steel products takes place in China. SSAB has approximately 9,000 employees in 45 countries and its products are sold worldwide. Since 1999, we have been assisting SSAB strategically to maximize the value of its IP assets in the global market. One of SSAB’s most valuable IP assets is the trademark HARDOX ®, a world leading abrasion-resistant steel.
During the first half of 2012 complaints about the quality of the steel were received from dissatisfied customers in China. Through extensive investigation work and laboratory analyses, it was found that the steel came from another company. The company had illegally produced and sold a low-grade abrasion-resistant steel under SSAB’s Hardox ® trademark.
Groth & Co submitted a so-called AIC-action (a simplified court procedure) to the Chinese authorities to immediately set a stop to the trademark infringement and to prevent counterfeited goods from reaching the market. This was widely reported and led to a reduction of counterfeited goods on the market.
Through our presence in the Chinese market with Chinese-speaking employees, we are able to maintain close relationships and easy communication with the authorities and our professional colleagues. This contributes to better cooperation between Europe and China.
"Through our presence in the Chinese market with Chinese-speaking employees we are able to maintain close relationships and easy communication with the authorities and our professional colleagues."
Since 2002 it has been possible to register an asset in the form of design protection that applies throughout the EU. Until 2010, no case had been appealed all the way up to the highest court, the EU Court Tribunal. This meant that there was still some uncertainty about the strength and scope of design protection, particularly since many of the EU member states had often judged differently in the cases previously handled. This situation continued until the case between the Spanish company Promer, represented by Groth & Co in Alicante, and PepsiCo was taken up by the European Court in March, 2011.
The case concerned Pogs or Tazos, a type of toy shaped like a large coin and made of plastic, cardboard or aluminum, and printed with highly colourful designs. Games are played with the discs, with the aim of winning the opponent’s discs. PepsiCo began distributing discs under the name Tazos through its subsidiary Fritolay. However, Promer already had a design registration for a similar disc, and had actually approached PepsiCo on a number of occasions to sell the concept to them.
Legal proceedings began in 2003 and have passed through OHIM’s Opposition Division, the EU Court of Appeals and finally the European Court Tribunal. Groth & Co’s customer Promer emerged victorious from the proceedings armed with argumentation and comprehensive knowledge of EU practice. The EU Court annulled PepsiCo’s registration.
"Until 2010 there was still uncertainty about the strength and scope of design protection in the EU."