IP Law Summit Fall 2019

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  • Get a new challenge

  • Guarding IP Assets in the Caribbean

    Gabriela Bodden of e-Proint, a service provider at the upcoming marcus evans IP Law Summit Spring 2012, offers her expertise into protecting intellectual property in the Caribbean. 

    Interview with: Gabriela Bodden, Partner, E-Proint


    “Safeguarding intellectual property (IP) in the Caribbean is a challenge, as the legislation is not all the same,” says Gabriela Bodden, Partner, E-Proint. “IP Counsel face the question of what, when and where to file their trademarks and patents.”

    From a law firm attending the marcus evans IP Law Summit Spring 2012 in Amelia Island, Florida, March 18-20, Bodden addresses some of the issues that US companies encounter when dealing with IP rights in the Caribbean and Latin America. 

    Why is protecting IP assets in this region a challenge?

    The legislation in the Caribbean is not all the same. There are around 25 island nations that have gradually shed their dependency on UK and The Netherlands jurisdiction laws, while others still operate under extremely outdated legislation.

    IP Counsel face the question of what, when and where to file. They must consider which countries permit the extension of UK registrations, which others apply the Nice Classification system, which possess a local classification or allow service mark filings. For example, in Grenada and the British Virgin Islands service marks can only be registered as an extension of UK registration. Hence, before proceeding with any trademark or patent filing projects, we recommend that counsel conduct an audit on all trademarks in the local languages and on a country-by-country basis, to determine the status of a company’s registrations and also their position in the jurisdiction.

    What cost-cutting strategies could you share?

    In the past, when faced with a large filing project, it meant having to file before the local registry in each country and this is still the same, however, IP right holders are now able to claim priority through the Paris Convention for the Protection of Industrial Property in various countries in the region, as most Caribbean islands accept a priority claim filing. Antigua and Cuba have also signed the Madrid System for the International Registration of Marks. 

    To save costs, it is always recommended to file in countries where multi-class applications are possible.

    To maximize the value of IP assets in this region, what else should IP Counsel consider?

    They must consider their company’s business strategies and goals. Depending on the types of goods they sell, they may take advantage of trade blocks that eliminate or reduce tariffs. There might be preferences for the goods and services traded between two countries. These are important tools.

    Counsel should prioritize filing in the countries where their goods and services will be introduced and where they are vulnerable to piracy. They must strengthen the company’s position in the region in comparison to their competitors. Their IP rights are their most important assets, and must be aggressively protected in the region.

    Contact: Sarin Kouyoumdjian-Gurunlian, Press Manager, marcus evans, Summits Division

    Tel: + 357 22 849 313
    Email: press@marcusevanscy.com

    About the IP Law Summit Spring 2012

    This unique forum will take place at The Ritz Carlton, Amelia Island, Florida, March 18-20, 2012. Offering much more than any conference, exhibition or trade show, this exclusive meeting will bring together esteemed industry thought leaders and solution providers to a highly focused and interactive networking event. The Summit includes presentations on safeguarding IP, developing sustainable brand protection strategies, global IP portfolio management and maintaining competitiveness with IP litigation.

    For more information please send an email to info@marcusevanscy.com or visit the event website

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    Please note that the Summit is a closed business event and the number of participants strictly limited.

    About E-Proint

    E-Proint’s vision is to be the most respected Intellectual Property law firm to offer a one-stop shop service within the Caribbean and Latin-America. Our professionals are ranked amongst the best in the field. We offer the finest legal advice whilst retaining the flexibility to respond to the individual needs of each client based on an ethic of excellence.


    About marcus evans Summits

    marcus evans Summits are high level business forums for the world’s leading decision-makers to meet, learn and discuss strategies and solutions. Held at exclusive locations around the world, these events provide attendees with a unique opportunity to individually tailor their schedules of keynote presentations, think tanks, seminars and one-on-one business meetings. For more information, please visit www.marcusevans.com 

    All rights reserved. The above content may be republished or reproduced. Kindly inform us by sending an email to press@marcusevanscy.com