KF is more than just Coop

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.

A board decision would be transformed into a strategy

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.

We created policy documents and implemented portfolio optimization

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 outcome: Implemented strategy, cost savings and improved protection

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

Gnostic has developed a ground-breaking diesel engine

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.

We have filed patent applications in 35 countries

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.

There is great potential in Gnostic’s global patent portfolio

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.

Trademark research is vital before your launch – especially in pharmaceuticals

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.

Eleven potential trademarks on four Nordic markets

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.

Our report included search results, analysis and recommendations

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.

With our report, the client could make a well-founded decision

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.

Airinum is a Swedish startup that manufactures and sells anti-pollution masks

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.

Airinum has a global market from day one, focusing on Asia

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.

We assisted Airinum with a global IP strategy and ongoing advice

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.

Uber is one of the world’s leading tech startups 

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.

A Swedish company filed a trademark application for UBERSKILLS

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 made sure Uber was successful in the opposition

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.

NCC

NCC AB is a Swedish multinational construction and real estate company, with operations in Scandinavia as well as Germany and the Baltic countries.

Clarify its offering using a separate brand

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.

Strategic naming led to trademarks and domain names

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.”

Our unique service of creating, protecting and designing a new brand

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.

A newly invented deodorant should be introduced to the market

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.

Desti – a protected and designed brand, ready to be used on all markets

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.

SKF is one of Sweden’s biggest trademark owners

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.

Such a large trademark portfolio generates costs

Having a trademark portfolio the size of SKF:s generates a lot of costs for renewals.

We conducted portfolio refinement to cut costs without reducing the scope of protection

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.

Saab Automobile Parts needed to change its name

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.

A name change requires the availability of domain names

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.

We created a strategy for domain names, and assisted with registrations, negotiations and transfers

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.

Patent work for an undisclosed client

Our client works with large infrastructure projects all over Sweden.

The client received a warning letter concerning patent infringement with a threat of court proceedings

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.

We solved the situation by invalidating the counterpart’s entire patent family

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.

Henkel’s product OSiS + DUST IT is very successful in Sweden

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.

Counterfeit products of poor quality started coming to Sweden

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.

Through customs surveillance, we managed to drastically reduce the number of counterfeit goods

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.

Nycomed is a pharmaceutical company operating in 70 countries

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.

Launching a drug is a big investment and it is essential to register trademarks

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.

We created a name ready for use in 35 markets

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.

Uncertainty about the scope of design protection in the EU prior to this case

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 was between PepsiCo and Promer

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.

We won this precedential case on Promer’s behalf

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.