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    Course Information

6055  Doing Business in Europe Under the New E.U. Trademark Laws


No cost or obligation  
Course Length    46  minutes
Course Price    $ 119.00

Volume discounts and subscriptions are available; for more information, contact Cognistar Sales.

    Accreditation Information


Click on jurisdiction below for more details.
>>  0.50  credit    NY  VA
>>  0.75  credit    CA  TX
>>  0.77  credit    TN

    About the Instructor(s)



 
Rafi Azim-Khan

Pillsbury Winthrop Shaw Pittman LLP

Rafi Azim-Khan is a partner in Pillsbury Winthrop Shaw Pittman’s London office and head of the intellectual property and information technology practices in Europe. He is also a member of the global sourcing practice and leads the firm’s e-business and marketing law teams. He was previously an IP partner in the London office of major U.K. firm Wragge & Co., where he was head of the e-business and marketing law groups. Prior to that he was an IP partner at McDermott Will & Emery and head of e-commerce.

Mr. Azim-Khan has worked almost exclusively on IP, regulatory and commercial matters for more than 15 years and has built a leading reputation (listed as a “leader” in advertising law since 1994 and as one of the U.K.’s “Digital Dozen” e-commerce specialists) for his high-level, strategic and cutting-edge advice (on a U.K. and international basis) for many well-known multinational clients, including GE, GM, Freeserve, British Bankers’ Association, Adaptec, Coca-Cola, Cadbury Schweppes, Shell, Camelot, Virgin, News International, Energizer and Wilkinson Sword; as well as many of the top advertising agencies.

He has advised major clients on numerous intellectual property issues (both litigation and commercial) and on all aspects of e-commerce and digital technology. On the IP side, this includes leading matter experience of passing off (including the “Jif” lemon House of Lords case), copyright (James Bond 007 franchise, photographic, music, TV, film, Guinness “Dancing Man” case, deeplinking), trademark/brand issues (Easy Jet domain disputes, the rebrand of Daewoo as Chevrolet), creation/protection of IP (convergence, TV and software patents & TM portfolios for the U.K. National Lottery/Camelot), ECJ “Bubbles” case O2 v. 3 (exploring the boundaries of the E.U. TM and Comparative Advertising Directives) and database rights (F1).

On the e-commerce side, this experience includes conducting full legal site “audits” for various multinationals, major ISP start-ups, B2B and B2C exchanges and auctions, e-partner agreements site creation and disclaimers, pan-E.U. online contracting, jurisdictional issues, net-shopping and marketing, net-betting/gaming, public key infrastructure, digital certificates and net-security. Mr. Azim-Khan advised on the set up and launch of the U.K.’s first Internet-only insurance products and separately one of the U.K.’s first fully interactive digital TV/Web portal commercials and Web sites selling cars direct from manufacturer to consumer for the first time.

On the marketing law front, Mr. Azim-Khan has considerable experience advising both advertisers and agencies on best strategy to compete or launch products, contracts, commercial issues, overcoming difficult regulator problems (ASA, OFT, Trading Standards), “clearance” of materials and marketing law and regulation both above and below the line. He has also advised, on a wide range of sale promotions and sports related deals (e.g., France ’98 World Cup), prize competitions, lotteries, newspaper and-television promotions (e.g. U.K.’s: first £1 million prize promotions), formats, terms and conditions. Mr. Azim-Khan has a particular experience in global and pan-E.U. marketing campaigns, new brand/product launches and comparative advertising disputes (e.g., global launch of Wilkinson Sword/Schick Quattro razor and successful conclusion of multicountry disputes with Gillette).

On the outsourcing, procurement, government contracting and commercial contracts side, Mr. Azim-Khan has significant experience, including advising BAE Systems on numerous outsourcing and data protection issues relating to the creation and operation of the Xchanging JV and its global HR and IT sourcing, as well as advising Shell on sourcing and commercial contracts aspects of a new business model. He has substantial public procurement experience of selling to and contracting/dealing with government (e.g., DOH, MOD, Catalist, OGC Buying Solutions) and has also advised on numerous agency, distribution, services, publishing, production and other agreements and trading terms and conditions. On the defense side, he also has particular experience of dealings with the U.S. Defense Dept., DSCC, security clearances and international aspects of foreign ownership and control, and on the E.U. side, the specific procurement rules and authorization requirements.

Sector experience, aside from defense, includes food, health care, IT, automotive and media.

Mr. Azim-Khan has been recognized as a leader in his field by a number of independent ranking publications, including Global 3000, Legal 500, Chambers Directory UK and Chambers World’s Leading Lawyers Guide, where he was listed as a leading individual.

Mr. Azim-Khan is a prolific writer on the subjects of IP, e-business and marketing and a regular speaker and columnist (contributed to the FT, Evening Standard, Bloomberg, Electronic Business Law, PLC and Commercial Lawyer).

Mr. Azim-Kahn is admitted to practice in the Law Society of England and Wales. He recieved his LL.B. from Queen Mary, University of London, 1990, and graduated from The College of Law, London, in 1991.



    Outline + Synopsis

Outline Synopsis
Doing Business in Europe Under the New European Union Trademark Laws
    I. Introduction
        A. Key Changes in E.U. Trademark Law
        B. New E.U. Trademark Law
        C. Why the Changes Are Relevant
    II. Marketing and Competitors
        A. Controls Over Marketing and Competitors
        B. Product Claims and Comparisons
    III. Razor Wars
        A. The Schick Perspective
        B. The Gillette Perspective
    IV. Trademark Claims in the E.U.
        A. Trademark Directives
        B. Infringement of the Trade Marks Act
    V. Trademark Infringement Cases
        A. British Airways and Barclays Cases
        B. Vodafone and Siemens Cases
        C. O2 Case
        D. McDonald’s v. Burger King
    VI. Doing Business in the E.U.
        A. Tips on Protecting Business
        B. What Businesses Should Do
    AfterWords®
    How to Obtain a Certificate


This course outlines the changes in European Union trademark law as well as changes in the ways companies can label and price a product, as well as the claims that can be made about what that product can or cannot do.

Using specific examples and cases, the instructor builds a clear picture of what companies should do to drive revenue, improve efficiencies and reduce costs while protecting their investment in the E.U. markets.




    Content Provided By

  With influence and presence on both U.S. coasts and abroad, Pillsbury Winthrop Shaw Pittman LLP enjoys an expansive international platform. The firm has 14 offices in global centers for capital markets, energy and technology and provides its clients with the strength of this reach and a commitment to cross-border service and responsiveness. Pillsbury is a leader in its core areas of focus: capital markets and finance, energy, global sourcing, litigation, real estate, technology, life sciences, and communications.



    Purchase course

6055  Doing Business in Europe Under the New E.U. Trademark Laws

Course Price     $ 119.00


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