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IPR DocumentsCase
Industry
Workflow
Firefighting technology
Patent
Litigation
Negotiations
The Italian company Cristanini S.p.a. is a leading supplier of fire fighting equipment in enclosed spaces. One of the company’s most prominent products is WJ.FE 300 – an extinguishing lance that first makes a hole in a wall to the space, such as a thick concrete wall or a fire door, by injecting a mixture of water and abrasive powder under high pressure. Then, once the hole is formed, inject a finely divided jet of water under high pressure that forms a mist that quickly lowers the temperature in the enclosed space while keeping the oxygen content in the space limited.
The invention entails that no additional equipment is needed in connection with the extinguishing work. The fire fighter is simultaneously protected from heat, smoke and toxic gases.
Groth & Co were asked to defend Cristanini’s patent after an opposition was filed against their Swedish patent.
Groth & Co defended Cristanini’s patent after an opposition was filed with the Swedish Intellectual Property Office (PRV). The dispute was about the “opponent” claiming that the invention was not new and lacking inventive step. After an initial exchange of correspondence between the parties, the Swedish IP Office summoned for an oral hearing which took place in September 2020.
In support of those pleas, the opponent referred to;
i) a fair where the invention was claimed to have been presented to an audience that was not bound by secrecy,
ii) information sheets on the invention which were considered to have been disseminated by Cristanini to clients, among others, without confidentiality,
iii) available videos on the internet published before the submission date,
iv) certificates from persons present at the fair and test respectively.
Groth & Co was able to defend Cristanini’s patent, by presenting witnesses certifying that information sheets and that tests were not made publicly available, among other evidence.
The parties initiated with the oral proceedings and on 13 January 2021, the Swedish IP Office decided that Cristanini’s Swedish patent was to be maintained in unamended form. As no appeal has been received within the prescribed time, this means that Cristanini now has a valid patent for a pioneering innovation in one of its markets.
Mar 2021
Cristanini S.p.a.
Firefighting technology
Music
Briefing
Research
Freedom-to-Operate
Trademark
Design
Patent
Copyright
Agreements
HarpAd has developed a new string instrument that can be attached to a 6-string guitar and thereby temporarily convert the guitar into a 12-string. HarpAd consists of a frame with strings and tuning screws, where the frame takes the tensile load of the six strings that are placed on it. The product is attached on the guitar so that the guitar and the product’s strings form double pairs, like a regular 12-string guitar, yet without making any permanent changes to the guitar.
Sweden’s governmental innovation agency Vinnova has a program called ‘IP-check’, where start-ups may apply for financial support of up to SEK 100,000 to work with strategic matters concerning intellectual property, both registrable and non-registrable. Together with HarpAd, we worked out an application which Vinnova approved.
Our collaboration started with a joint workshop with the aim of identifying HarpAd’s intellectual property assets and creating an understanding of how these affect the company’s operations, business strategy and market position. After a number of supplementary questions, the results were delivered in a written report that included, among other things, a survey of existing intellectual property, significant contractual relationships and future opportunities for additional intellectual property rights. In addition, the report contained a second opinion on HarpAd’s existing Swedish patents and an analysis of the possibilities of having a follow-up PCT application approved in other countries.
The next step was an analysis of the surrounding world in the form of a technology search, a so-called Patent Landscape Search. The aim of the search was to find existing related patents to identify potential “road blocks” but also other actors and technical solutions that could become future partners or competitors. The analysis of the surrounding world was delivered in a written report that contained both our analysis and all relevant search results.
Based on the Status Report and the Patent Landscape Search, as well as the company’s existing intellectual property and its business model, we finally developed and drafted an IP strategy for HarpAd. The strategy contained, among other things, practical measures of a policy nature, a strategy for future registrable intellectual property rights and relevant markets, contractual matters and copyright, as well as relationships to third-party rights. The document also had a special focus on potential licensing and therefore contained both prerequisites and strategic considerations regarding a future licensing strategy.
After completing the project, HarpAd had an in-depth understanding of their most important intellectual property rights and how it affects the company’s business and strategy. In addition, they had mapped the conditions for a future licensing model.
The strategic work also led to a number of concrete measures that HarpAd chose to implement to improve its IP situation and the possibilities for licensing. Among other things, to produce a standard agreement for external collaborations and to supplement its existing protection with additional applications in patents, trademarks and design.
Groth & Co are skilled and fast in their communication. When it comes to expertise, they know how to discuss and explain the possible different outcomes, depending on which path you choose.
/ Josefin Fredén, founder, HarpAd
"Groth & Co are skilled and fast in their communication. When it comes to expertise, they know how to discuss and explain the possible different outcomes, depending on which path you choose."
Sep 2020
HarpAd AB
Music
Managing Partner
Managing Director
European Trademark and Design Attorney
+46 8 729 91 52
Luxury goods
Litigation
Trademark
Marketing Law
In June 2019, the French champagne house André Clouet initiated a lawsuit against the French champagne producer Maison Burtin and its Swedish importer Iconic Wines at the Swedish Patent and Market Court (PMD). In the lawsuit, André Clouet accused both trademark infringement and violation of the Marketing Act and demanded a fine in the multi-million class.
The lawsuit concerned the labels of three different champagne bottles – on the one hand André Clouet and on the other hand Alice Bardot and Bônde & Étable, which are both produced by Maison Burtin and are imported to Sweden by Iconic Wines. André Clouet claimed, among other things, that the labels on the Bônde & Étable and Alice Bardot bottles were confusingly similar with the label on the André Clouet bottle, and thus constituted both trademark infringement and violation of the Marketing Act. Our mission was to defend Maison Burtin against André Clouet’s allegations. André Clouet was represented by MAQS law firm and Iconic Wines by Vinge law firm.
We represented Maison Burtin throughout the dispute, i.e. from the time we received the cease and desist letter during spring 2019 until the Swedish Patent and Market Court’s judgement was announced on 12 August 2020. Our work included responding to the lawsuit, drafting several extensive submissions as well as preparing and acting as a legal representative at the preparing oral negotiation in December 2019 and at the main hearing in June 2020. The main hearing took place in the Swedish Patent and Market Court and lasted for four full workdays, where only the parties’ statements of facts took a full workday. The parties’ had invoked extensive written and oral evidence, such as several legal statements, a market study and various expert witnesses, for example the hearing of a sommelier, financial experts and experts on consumer behaviour.
When the judgement was announced, it became clear that our client Maison Burtin had full success in this dispute. The court bought our arguments and stated that there was no likelihood of confusion between the different labels. Thus, the Bônde & Étable and Alice Bardot labels did not constitute trademark infringement. The court also supported our opinion with regard to the question of whether the appearance of the André Clouet label and/or the bottle was incorporated, and thus found that the market study did not show any incorporation among the Swedish public of either the label or the bottle as such. Thus, it was not a question of passing-off under either the Trademarks Act or the Marketing Act. The court further found that none of Maison Burtin or Iconic Wines had violated the Marketing Act in the form of misleading presentation or misleading imitation.
The judgement meant that the entire lawsuit was dismissed and thus that all of André Clouet’s claims were rejected. Instead of bringing about a prohibition, combined with fines and damages, André Clouet had to pay, not only its own legal costs, but also our client Maison Burtin’s and Iconic Wines’ legal costs to handle the dispute.
Sep 2020
Maison Burtin
Luxury goods
ICT/Telecom
Patent
Trademark
Telia is Sweden’s largest telecom company. The company has over 20,000 employees and operations in Denmark, Estonia, Finland, Latvia, Lithuania, Norway and Sweden. The subsidiary Telia Carrier owns and operates one of the world’s most extensive fiber backbone. Telia is listed on Nasdaq Stockholm and Nasdaq Helsinki, with the Swedish state as one of the owners.
The company was founded in 1853 as the Swedish authority “Kongliga Elecktriska Telegraf-Werket” (the Royal Swedish Electric Telegraph Office) and was later named Televerket in the 1950s. In connection with the company being incorporated in 1993, it was also re-named as Telia – a name created by the naming consultants of our sister company Skriptor Zigila.
We handle the majority of Telia’s patent portfolio and assist with advice in all phases of the patent work. Our work includes strategic advice to Telia’s patent manager, as well as drafting, filing and prosecution of patent applications globally. We also handle validations of European patent applications.
Telia’s offerings revolve around everything from innovative digital business solutions to smart services for private customers – all based on the company’s world-class network. The patent applications apply to technology in various fields. In recent years, for example, we have filed patent applications related to Internet-of-Things, 5G, the next generation of wireless networks and network solutions, but also around security solutions such as Blockchain.
Our attorneys have great expertise in telecom, ICT and related technology. In particular Nabil Sebaa who has previously worked in-house at Ericsson’s patent department and therefore has extensive expertise in patent work in telecommunications, also regarding Standard Essential Patents (SEP) and related licensing.
Telia handles most of its work with its trademark portfolio through and skilled in-house department. When needed, we assist this department with advice on trademark prosecution and contentious work. We are often asked to argue against an IP Office or counterparty in applications, oppositions or revocation cases. We have also handled negotiations and written Cease and Desist letters. During the decades of our collaboration, we have also filed and prosecuted a number of larger series of trademark applications – for example large international series in many countries for the important house mark TELIA.
We have worked closely with Groth & Co for many years and really appreciate their professional work. The high quality of their advice and the attorneys’ way of acting make our collaboration very easy.
/Kirsi Ekström – Director, IPR & Trademarks | CA Innovation and New Tech Group IPR, Telia Company
"We have worked closely with Groth & Co for many years and really appreciate their professional work. The high quality of their advice and the attorneys' way of acting make our collaboration very easy."
Sporting Goods
Trademark
Design
International
Watching
Enforcement
Agreements
Norwegian Petter Northug ended his career in December 2018, as one of the most successful cross-country skiers of all time – with four medals from the Olympic Games and 16 medals from the World Cup. Since then, Petter has launched his own brand Northug, selling glasses, bags and clothing for use in sports such as cross-country skiing and cycling.
We have assisted Northug with trademark applications in Europe, North America and Asia. At this point, the company’s trademark protection includes the word mark NORTHUG, a figurative mark for the logo as well as a figurative mark for the N symbol that is visible as part of the logo and independently on the products. Our work has included everything from application strategy to preparing and filing the applications, as well as global coordination and prosecution of the applications.
Northug’s glasses have a proprietary technology to swiftly change the lens to the arches. The technology is called SwiftClick and for that we have filed applications for trademark and design protection.
With its registered trademark and design rights, Northug can work actively to combat infringement and fight copy-cats. So far, we have assisted Northug with actions against new third-party trademark applications as well as in-use trademark infringement. Among other things, our work has included to file cancellation actions, negotiations with counterparties and drafting co-existence agreements.
Northug uses our trademark watching service and can thus both detect and act on third-party trademark applications which may be confusingly similar to Northug’s trademarks.
There are many good examples of athletes who have become successful with their brands after ending their careers. With both trademarks and design rights granted, Northug has laid a good foundation for expanding its business. Already today, the products are sold in close to 300 stores in six countries, and successful athletes such as Anders Aukland, Calle Halfvarsson and Frida Karlsson are among the brand’s ambassadors.
"4 medals from the Olympic Games and 16 medals from the World Cup"
Mar 2020
Brand Machine Europe AB and Northug AS
Sporting Goods
Energy
Research
Trademark
Vattenfall is an energy company with approximately 20 000 employees, owned by the Swedish government. The company has a turnover of SEK 160 billion and its primarily place of business is in Sweden, Germany, The Netherlands, Denmark, United Kingdom and Finland.
Groth & Co handles Vattenfall’s entire trademark portfolio since 2014 and, as a part of our ongoing work, we have provided Vattenfall with legal advice and actions when their new logotype was to be launched during the spring of 2018.
By performing clearance searches of the logotype on a selected number of key markets, our task was to make sure that Vattenfall’s new logotype would not constitute trademark infringement of existing rights. These searches and corresponding analysis were conducted by experts in our department specialized in searches and monitoring of trademarks and domain names.
The clearance searches showed no risk of infringement; therefore, trademark applications were filed on all key markets. Before filing the trademark applications, we also assisted the client with strategic considerations regarding which different versions of the new logotype to apply for to gain the best possible scope of protection.
Vattenfall had been using its previous logotype since 1992 with only a few smaller alterations. The company has since then fundamentally changed. Vattenfall started out as a Swedish domestic electricity and energy company and is today one of the biggest energy enterprises in Europe, with the mission of becoming fossil free within one generation
The process of changing Vattenfall’s logotype and the connected visual identity was initiated in March 2018, when the company’s websites and displays in most of the more dominant places were transformed. Through our work, Vattenfall was able to avoid legal concerns by the time of the launch as well as to obtain the legal protection that comes with trademark registrations.
Thanks to Groth & Co, we were able to successfully register the new trademark and launch the new logotype without risking infringing someone else’s IP. /Caroline Falconer, Senior Legal Counsel, Vattenfall AB
"Thanks to Groth & Co, we were able to successfully register the new trademark and launch the new logotype without risking infringing someone else's IP"
Life Science
Domain Name
Litigation
Watching
Recipharm is a leading pharmaceutical contract development and manufacturing organisation (CDMO) headquartered in Stockholm with over 6000 employees globally. The company is listed on Mid Cap Stockholm and we have been assisting Recipharm with trademarks and domain names since 2001.
Using our domain name watching service, we found that an unknown third-party had registered the domain name secured-recipharm.com. When we found it, there was no website published under the domain but Recipharm suspected that the domain could be used for phishing or other fraudulent activities. Therefore, we were instructed to take down the domain name.
Our efforts started with contacting the registrar, asking them to take down the domain name. Yet, the registrar took no action despite of our argumentation and reminders. Therefore, we filed a request for a UDRP (Uniform Domain-Name Dispute-Resolution Policy) at WIPO to try to get the domain name transferred to our client. We handled this procedure for Recipharm, including drafting and filing of written argumentation on why the domain name should be transferred to our client. This was mainly based on referencing the clients existing trademark rights for Recipharm.
We were successful in the UDRP, and the domain name was therefore transferred to our client. The domain could therefore no longer be used for fraudulent attempts against our client. The dispute resolution through UDRP took less than two months and the fee to official fee for an UDRP is only $1500.
Groth & Co handled the case fast, efficient and with great expertise. We are pleased with the outcome.
/Martina Ferneman, Director of Corporate Development, Recipharm
"Groth & Co handled the case fast, efficient and with great expertise. We are pleased with the outcome."
Nov 2019
Recipharm AB (publ)
Life Science
Deputy Head of Law and Trademark Dept.
European Trademark and Design Attorney
+46 8 729 91 91
Automotive
Patent
International
Gnostic Motor Corporation AB is a Swedish start-up company that has developed a new type of diesel engine. Their engine substantially reduces, or even eliminates, the emission of NOx gases – the biggest environmental problem with today’s diesel engines.
On behalf of Gnostic, Groth & Co have filed and prosecuted patent applications in 35 countries. We have submitted applications via the international PCT system as well as nationally in some countries. Among other things, this means that we have administrated the world’s first PCT filing in Kuwait.
The series of applications in 35 countries required skilful administration on our part. One reason being that we had limited time. But mainly because several of the countries have complex legal formalities, and there was a need for coordination of a large number of local actors; translators, patent offices, patent attorneys and lawyers as well as embassies.
Our European Patent Attorney Claes Westerlund has a Ph.D. degree in combustion engine technology. He has also worked as a development engineer at Scania, where he developed optimized steering systems for heavy diesel engines. With this very deep technical knowledge, Claes has very relevant skills for clients working with engine technology.
Our paralegal Lisa Rohan has many years of experience in complex global patent filings as well as coordination between local agents, inventors and patent offices.
Since this engine can replace all types of diesel engines, in all types of vehicles and machinery, there is great potential for this innovation. Through our work, Gnostic will soon have a patent family protecting the core of their innovation, with coverage in 35 countries.
We will continue assisting Gnostic with patent matters and we are now in the process of preparing further applications for other parts of their ground-breaking engine. The technology is intended to be licensed, so the drafting of the patent applications as well as the selection of countries are optimized for this purpose.
"The technology is intended to be licensed, so the drafting of the patent applications as well as the selection of countries are optimized for this purpose."
MedTech
Patent
Freedom-to-Operate
International
ContextVision is a Swedish MedTech company that specializes in image analysis and artificial intelligence. The company is a global market leader in image enhancement and delivers image processing to OEM manufacturers within ultrasound, MRI, X-ray and mammography worldwide.
We assisted ContextVision with strategic considerations regarding patents as the company developed new technology. Namely, Artificial Intelligence (AI), especially deep learning, used to automatically optimize image quality. Clinical assessments from the expert are used to train the AI to automatically correct and change system parameters for better image quality. This makes it possible to optimize the image quality for each individual patient.
This is a very research-intensive area with a rapid development, which is challenging when making investments decisions. In this environment, our task was to analyze the patent landscape and give advice how to design patents that protect this new technology.
As background to the strategical discussions, we performed a freedom-to-operate search and analysis (FTO), with a focus on mapping competitor’s activities. This was important both for future research and innovation but also for future patent work.
Based on the FTO, we could give the client advice on the current IP situation, as well as how to use and design patents in this new area of technology and business. We then drafted and filed patent applications for this AI technology in the US and Japan.
The U.S. patent application has now been granted and ContextVision therefore holds a patent for its AI application in their main market.
We have put great value on Mathias’ work, because it is important for us to be able to conduct commercial activities based on our technical development. The area is extensive, complex and moving fast, and we have therefore greatly benefited from the help of assessing the patent situation. Mathias is extremely knowledgeable and has a very good understanding of the technology, which made it easy to collaborate and come to conclusions.
/Anita Tollstadius, CEO, ContextVision
"We have put great value on Mathias' work, because it is important for us to be able to conduct commercial activities based on our technical development."
Jul 2018
ContextVision AB
MedTech
MedTech
Freedom-to-Operate
Patent
Naming
Trademark
Domain Name
International
Transactions
ContextVision is a Swedish MedTech company with cutting-edge expertise in image analysis and artificial intelligence. The company is a global market leader in image enhancement and delivers image processing to OEM manufacturers within ultrasound, MRI, X-ray and mammography worldwide.
We assisted ContextVision with strategic considerations regarding patents when developing a new pathology product. An important component of ContextVision’s new product was machine learning – in this case, to identify abnormal image patterns that respond to pathological tissue alterations. The technology area is very research-intensive and with a rapid development, which is challenging when making investment decisions. With these conditions, our task was to analyze the patent landscape and give advice on how ContextVision should construct and file patents to protect this new product.
As a basis for the strategic discussions, we conducted a Freedom-to-Operate analysis (FTO), focusing on mapping competitors’ activities in related areas. This analysis was important, not only for future research and innovation, but also for future patent work.
Based on the FTO, we could give advise to ContextVision on the current patent landscape, and how they should use patents to protect the new product. We then drafted and filed patent applications in the US, Europe, Japan and China. These applications comprised a method for annotating digital tissue sections, as well as a system and software for detecting pathological animal products in a digital pathology image.
When the patent work was completed, the naming and trademark work started. Together with our sister company, the naming agency Skriptor Zigila, we were commissioned to both create and protect a trademark for the new product.
The client’s wish was to have a name that would be short and punchy, and associated with science and technology. By using their naming process, Skriptor Zigila came down to two top candidates. These two potential names were screened linguistically and communicatively, but also with regards to availability of domain names and the possibility of trademark registration. After this research, the chosen name became INIFY. Shortly thereafter, we assisted the client with trademark applications on 19 markets globally and with purchasing of the domain name inify.com from its previous owner.
I really appreciate the professional work that Groth and Skriptor Zigila have done, and feel that we have now taken important steps to build a good IP platform for our future product. When developing a new product, it is very important to think strategically and to have a long-term perspective, and Groth is good at doing so.
/Lena Kajland Wilén, Director of Business Unit Digital Pathology, ContextVision
"When developing a new product, it is very important to think strategically and to have a long-term perspective, and Groth is good at doing so."
Oct 2018
ContextVision AB
MedTech
IT
Naming
Domain Name
Research
Trademark
The company’s origin is found in the merger of the two IT companies Candidator and DGC. Together, with the venture capital company EQT as their owner, they have grown and acquired three other IT companies: Solid Park, Exeo and Ismotec. With our assistance, those five companies became Iver. The new company develops and delivers services in IT operations, high-security solutions and application development. From the start, Iver had sales of more than SEK 1.5 billion and had about 900 employees in Sweden and Norway.
Our work started with our sister company, the naming agency Skriptor Zigila, created what was going to be a new name for the company. After completing Skriptor Zigila’s creative and strategic process for name creation, the name Iver became the client’s favourite. However, the name came with a problem: the corresponding domain names in the relevant TLD:s were already registered by other parties.
The two most important domain names for the client were iver.com and iver.se. As both domain names were owned by other parties, we identified the holders and initiated dialogs on behalf of the client. We were successful in the negotiations and managed to purchase and transfer both domain names to the client. We also registered iver.no and iver.fi.
We also performed trademark clearance searches for the name to determine whether the name could be registered as a trademark on relevant markets. Our searches covered the EU, including all 28 member states, as well as Norway. The search results were handed over to the client in a written report which also contained our assessment on likelihood of the trademark applications being granted, as well as recommendations on how to proceed.
After securing the domain names and reviewing the clearance search report, the client could pick its favourite name candidate and decided to name the company Iver. Later, we also prepared and filed trademark applications in EU and Norway for Iver.
– It is quite rare to find such a short and powerful name, which also works well in all four Nordic languages. It has been a very long process with over 600 names, but in the end, everyone felt very satisfied, says Iver’s CEO, Åsa Arvidsson, to the magazine Computer Sweden.
The change of name to Iver officially took place on May 23, 2019, and included the former names Candidator, DGC, Solid Park, Exeo and Ismotec, all of which were phased out during a transitional period.
"The domain names in the relevant TLD:s were already registered by other parties."
Deputy Head of Law and Trademark Dept.
European Trademark and Design Attorney
+46 8 729 91 91
Consumer Products
Real estate
Media
Portfolio Refinement
Trademark
Domain Name
KF, The Swedish Cooperative Union, was founded in 1899. KF consists of 40 consumer-owned companies and associations that together collect about 3.5 million consumers. KF includes, in addition to Coop, also KF Fastigheter, MedMera Bank, Vi Media and Vår Gård Saltsjöbaden.
KF made a board decision with the purpose of streamlining trademark management that would result in a control model for the trademark portfolio. The ambition was to clarify the role of the association’s various trademarks and to focus its work on a fewer number of prioritized trademarks. Among the first steps was to invite intellectual property law advisers to a procurement regarding trademarks and domain names, which we at Groth & Co won in fierce competition.
With the procurement completed, KF formed a trademark strategic council under the leadership of Pia Carlsson Thörnqvist, Head of Trademark and Organization. The council included key people from KF’s organization representing both legal and market expertise and various roles within Coop Sverige AB. Representatives from us at Groth & Co participate in council meetings to contribute with external expertise.
Our work began with a process of portfolio optimization that resulted in recommendations on which trademarks and domain names that were to be closed, as well as which supplementary applications should be submitted. In addition, we provided advice on which domain names that could be sold. The trademark council’s initial task was to anchor and determine these efficiency decisions based on our recommendations and existing board decision.
In parallel with the optimization work, we also wrote a comprehensive internal document for KF, containing process description and routines for trademark and domain name management. After the initial process map, the document contains routines for registration of trademarks and domain names, renewals, watching, actions in case of infringement, annual evaluations, and current distribution of roles and ownership issues.
The entire project from start-up to the delivery of the process document and all decisions in the trademark council were taken took three months. Then KF had an internal policy document with the purpose of simplifying the work internally and ensuring that KF’s portfolio remains optimized in the future. The document was implemented in the organization through the members of the trademark council and other key functions. KF had also reduced its previous too large trademark portfolio by over 50% and its domain name portfolio by approximately a third. Thus, KF had also created future cost savings that exceeded one million SEK. In addition, we have submitted supplementary trademark applications and domain name registrations, which meant that KF received better legal protection for its prioritized trademarks.
In the future, we will continue assisting KF and the trademark strategic council with advice on trademark and domain names. Our work covers everything from applications and registrations, to watching, renewals, proceedings and warning letters.
The project has given us a good platform to ensure that we have a trademark portfolio with the right protection and at a reduced cost. This work, which started our collaboration with Groth & Co, was carried out with a timetable that made the work concentrated and efficient – both in terms of cost and work effort.
/ Pia Carlsson Thörnqvist, Head of Trademark and Organization, KF
"“The project has given us a good platform to ensure that we have a trademark portfolio with the right protection and at a reduced cost.""
Feb 2018
KF - The Swedish Cooperative Union
Media
Media
Media
Managing Partner
Managing Director
European Trademark and Design Attorney
+46 8 729 91 52
MedTech
Patent
International
Research
Due Diligence
Transactions
SciBase AB is a Swedish medtech company founded in Stockholm in 1998. SciBase has developed a unique point of care device for the accurate detection of malignant melanoma (skin cancer), which significantly increases the physician’s ability to detect and monitor skin tissue alteration.
Skin cancer is the most common and one of the fastest growing form of cancer in the world, and malignant melanoma is the most dangerous form of skin cancer with a high mortality rate if not detected in time. Today, some 50-60 million annual examinations for malignant melanoma are performed, of which 5-6 million lead to excisions. Of these, some 93-97 percent are shown to be benign. With this product, the number of unnecessary interventions can be reduced by up to 40 percent.
The SciBase method is based on a technology called Electrical Impedance Spectroscopy (EIS), which uses the varying electrical properties of human tissue to categorize cellular structures and thereby detect malignancies. It has emerged from more than 20 years of academic research at Karolinska Institutet Stockholm. Through a crooked path of theoretical philosophy, applied physics and sensing technologies, Stig Ollmar, researcher and founder of SciBase, and his research colleagues established the foundation of what today is the SciBase method at Karolinska Institutet Stockholm in the early 1990s. Further research was conducted, with great improvements of the method as a result, which led to SciBase being founded in 1998. Since then, further research, a pilot study, and a number of clinical studies has improved and proved the benefits of the method.
Our Managing Partner and Head of Patent Department, Mathias Loqvist has been working with SciBase since 2002. Through a close cooperation we have assisted SciBase with patent services ranging from drafting and prosecution of their patent applications to strategical advice in connection with IPO and Due Diligence as preparation for investments. Our work has resulted in a global and comprehensive patent portfolio. We are also handling SciBase’s trademarks worldwide, acting as the lead agency and coordinating all work globally.
Three consecutive and comprehensive clinical studies, with excellent clinical results, have been performed to date for the SciBase method. A successful pivotal study was finalized in 2012 including 1,951 patients and 2,416 lesions at 22 sites in Europe and US.
Today, SciBase is a listed company with a product on the market, approved for sales in Europe, Australia and USA.
""Creative imagination provides ways to make our dreams come true. This holds true also for IP rights, and working with Mathias and Groth & Co is always fun and educational. /Stig Ollmar, Founder, SciBase""
Mar 2018
SciBase AB
MedTech
Life Science
Research
Trademark
Trade Name
Before launching a brand to the market, it is important to consider the ability to use the name without infringing others and the ability to register the name as a trademark. This is especially important with pharmaceutical trademarks, as the trademarks have to be accepted by not only the local Trademark Office but also the relevant Medical Products Agency.
In this case, we assisted an international pharmaceutical company with clearance searches and analysis in the Nordics for 11 pharmaceutical trademarks.
Our task was to conduct searches in Sweden, Norway, Denmark and Finland regarding both availability and registrability, for all 11 potential trademarks in a number of defined relevant trademark classes. This task included searches in relevant registers of trademarks and trade names as well as pharma in-use. The search results consisted of existing trademarks and trade names with different levels of similarity.
With the search results in hand, our trademark attorneys analysed the results and made legal assessments determining the risk of potential infringements. Our Life Science experts also made assessments on registrability, taking into consideration local praxis for both trademarks at the Trademark Office as well as regulatory matters at the Medical Products Agency.
The result of our searches and analyses was presented to the client in a written report containing all legal assessments and a complete list of search results.
In our written rapport, we strongly recommended against one of the trademarks in one suggested class in all four countries, due to existing rights. Apart from that, our analysis was the potential trademarks were good. Very few substantial threats were found, and therefore registrability and availability were considered good. The client could then make a well-founded decision regarding the potential trademarks in the Nordics.
With our in-house search and monitoring department, we have great experience in conducting searches like these. In this specific case.
"With our in-house search and monitoring department, we have great experience in conducting searches like these"
Jun 2017
An international pharmaceutical company
Life Science
Managing Partner
Managing Director
European Trademark and Design Attorney
+46 8 729 91 52
Media
Patent
Litigation
Enforcement
Negotiations
Agreements
International
Moving Media Nordic is a premier technical service provider and rental house for broadcast equipment. The company’s most prominent service is called DOB – Distance Outside Broadcast. The invention enables broadcasting companies to produce live international sport feeds and other multi-camera productions from one control room with full signal and communication control, without degradation. This is a major breakthrough in the TV industry. Previously, a large production bus had to be brought to the filming location and used as a control room. DOB saves both costs and time without compromising the quality of the production. The invention has already received worldwide attention, for example, the Olympic Games in London 2012 was produced using Moving Media Nordic’s invention.
We, Groth & Co, have drafted and prosecuted the patent application for Moving Media Nordic’s DOB. The patent has been filed in Sweden, Europe, Eurasia, South Africa, Australia, USA, Brazil, Canada, China, India, Japan and South Korea.
At the Swedish Patent- and Registration Office, PRV, seven different oppositions were filed against the granted patent. At the EPO, the written proceedings led to oral proceedings during spring of 2016.
On behalf of Moving Media Nordic, we handled both hearings at both patent offices. The fact that the opposition case in Sweden had seven different oppositions from eight different large media companies, all represented by prominent IP or general law firms, made this case both extraordinary and challenging.
The opposition proceedings in Sweden were put on hold awaiting the decision from the EPO. At the EPO, the written proceedings led to oral proceedings where we were successful and got the European patent granted.
Once the EPO announced the decision to grant the patent, PRV in Sweden held an oral hearing in August 2016. The hearing was a long process; as each attending opponent was given time to state his or her individual argumentation, which was then met by us. The ruling was announced in May 2017, that the Swedish patent was maintained. This means that Moving Media Nordic now holds a valid patent for a groundbreaking innovation on two of its most important markets.
We now assist Moving Media Nordic in the validation of the European patents as well as in licensing negotiations and drafting of related agreements.
"Moving Media Nordic now holds a valid patent for a groundbreaking innovation on two of its most important markets"
May 2017
Moving Media Nordic AB (former Twentyfourseven Holding AB)
Media
Fashion
Business integration
Briefing
IP Budget
IP Action Plan™
Trademark
Design
International
Airinum is a Swedish startup that empowers individuals to breathe clean air by offering innovative products that intersect functionality and design, catered to urban citizens all over the world. Their Urban Air Mask is a fashion accessory with state of the art technology to tackle pollution issues.
The facial mask is designed, developed and tested in Sweden, but the most important markets are pollution heavy cities in Asia. Therefore, their key-markets are China, Hong Kong, Taiwan, South Korea and Japan.
Being a startup company with a global market creates a challenging business problem – their need for global IP is extensive, but their access to capital is limited. In our strategic work, we have taken into special consideration their global market but limited funds.
Our work started with a strategical workshop with Airinum. During the workshop we discussed important business matters such as business plans and objectives, prioritized markets, competitors and marketing strategy. The result from these discussions were then applied when discussing strategical use of IP.
As a result of the workshop, we delivered a report to the client helping them in prioritizing their money spent on IP in relation to future scope of protection. This included both geographical priorities as well as priorities between different forms of IP. Our report also included an IP Action Plan for the next 12 months.
Moving forward, we handle Airinum’s IP portfolio globally, assisting the clients in a number of IP matters such as trademark and design applications, enforcement actions and further strategic advice.
"It has been a pleasure working with Groth regarding our IP strategy and we look forward to continuing our cooperation in the years to come. With cost-efficiency as the basic idea, their professional employees have guided us in what we feel is a healthy strategy given our company’s prerequisites."
May 2017
Airinum AB
Fashion
Urban agriculture
Valuation
Trademark
Research
Due Diligence
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 is a growing tech start-up, still without established revenue streams. Therefore, traditional methods for valuation based on cash flow does not work in this type of company, where the assets are intangible and exists mainly in IP. It is therefore the IP portfolio of Plantagon that constitutes the company’s value.
Plantagon wanted to use its IP portfolio to attract further funding. We have previously valued Plantagon’s patent portfolio (read the case here). However, there was no established value for Plantagon’s brand.
We conducted a brand valuation based on Swedish Standard SS-ISO 10668:2010 (Brand valuation – Requirements for monetary brand valuation (ISO 10668:2010, IDT)). The value is calculated according to the standard by three parallel analyses; one financial, one legal, and one market analysis. The financial analysis can be done based on returns, market value or costs, and for Plantagon, cost estimate was chosen, as neither return nor market valuation had given a fair value. The legal analysis investigates issues related to both ownership and trademark protection, such as registrations, distinctiveness, competitive rights, possible ongoing disputes, etc. The market analysis examines the forecasts of market size, behavioural factors and the brand’s communicative strength. The standard also sets specific requirements regarding transparency, validity, reliability, definition, purpose and value concept. We collected the material for valuation through interviews with key people, database searches, internal policy documents and other external sources.
Through our strategic approach and our established partnerships, we could establish a value for the brand within a narrow range, based on the financial information and adjusted with regards to legal and market strengths and weaknesses.
Plantagon could, after our valuation, highlight a previously hidden asset and use this asset to attract further funding as well as basis for future strategic considerations.
"Plantagon could, after our valuation, highlight a previously hidden asset and use this asset to attract further funding as well as basis for future strategic considerations"
May 2017
Plantagon International AB
Urban agriculture
Managing Partner
Managing Director
European Trademark and Design Attorney
+46 8 729 91 52
Technology
Trademark
Litigation
Uber is a technology company from San Francisco that offers a mobile app for car transportation and food delivery. The company operates in over 600 cities globally and is valued at 68 billion USD (November 2017). Uber has been in business in Sweden since January 2013.
The Swedish company Red Core AB filed a trademark application for UBERSKILLS in Sweden for goods and services where Uber owns trademark registration. Our task was to limit the scope of protection for Red Core’s trademark to ensure that it does not infringe and damages Uber’s trademarks.
We represented Uber in an opposition case before the Swedish Patent and Registration Office (PRV), where we argued that there was a high risk of confusion between UBERSKILLS and Uber’s trademarks. The opposition was based on Uber’s registered trademarks UBER, UBERX, UBERPOP, UBEREATS and UBERPOOL.
PRV confirmed our argumentation in its ruling, namely that UBERSKILLS has a high degree of similarity with Uber’s trademarks and that customers could perceive UBERSKILLS as a version of Uber’s trademarks and therefore be of the same commercial origin as Uber’s trademarks. PRV found that there was a risk that the trademark UBERSKILLS could be mistaken for Uber’s trademarks and to a large extent cancelled the registration of UBERSKILLS – both by cancelling a number of classes completely, and by limiting the goods and services listed in other classes. By doing so, the protection of UBERSKILLS was largely limited and minimized the likelihood of confusion with Uber and their trademarks.
"Our task was to defend the very important UBER trademark"
Engineering industry
Due Diligence
Patent
Transactions
Valuation
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.
"The parties could reach an agreement with a purchase price of 30 million Euros"
Jul 2015
Hamilton Advokatbyrå (Law firm)
Engineering industry
Real estate
Naming
Research
Trademark
Domain Name
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"
Media
Trademark
Watching
Litigation
Enforcement
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."
Consumer Products
Naming
Trademark
Domain Name
Research
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.
"Brand Entity - a unique collaboration to help clients in name creation, legal protection and designing a new brand"
Sep 2015
SALAB - Stockholms Analytiska Laboratorium AB
Consumer Products
Urban agriculture
Business integration
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."
Managing Partner
Managing Director
European Trademark and Design Attorney
+46 8 729 91 52
Technology
Portfolio Refinement
Trademark
Renewals
Recordals
IP Budget
Client Team
International
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."
SKF AB
Technology
Urban agriculture
Valuation
Research
Due Diligence
Freedom-to-Operate
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."
Plantagon International AB
Urban agriculture
Automotive
Research
Digital Law
Domain Name
Negotiations
Transactions
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."
Saab Automobile Parts AB (now Orio AB)
Automotive
Lighting
Business integration
Research
Business integration
Trademark
Activity Evaluation
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."
Aura Light International AB
Lighting
Infrastructure
Research
Freedom-to-Operate
Business integration
Patent
Litigation
Enforcement
Negotiations
Activity Evaluation
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"
Anonymous
Infrastructure
Engineering industry
Litigation
Design
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"
Consumer Products
Customs Survey
Trademark
Agreements
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."
Henkel AG & Co. KGaA and Schwarzkopf Professional Henkel Norden AB
Consumer Products
Managing Partner
Managing Director
European Trademark and Design Attorney
+46 8 729 91 52
Life Science
Trademark
IP Action Plan™
Client Portal
Recordals
Portfolio Refinement
International
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."
Pfizer Inc.
Life Science
Life Science
Naming
Research
Trademark
International
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."
Managing Partner
Managing Director
European Trademark and Design Attorney
+46 8 729 91 52
Steel
Litigation
International
Trademark
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."
Managing Partner
Managing Director
European Trademark and Design Attorney
+46 8 729 91 52
Consumer Products
Litigation
Design
Research
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."
Managing Partner
Managing Director
European Trademark and Design Attorney
+46 8 729 91 52
Stockholm
Headquarter
Alicante
Munich
Shanghai