Welcome to our blog for Intellectual Property Law and Practice in Latin America!
¡Bienvenidos a nuestro blog de Derecho y Práctica de la Propiedad Intelectual en Latinoamérica!
Bem-vindo ao nosso blog sobre Direito e Prática de Propriedade Intelectual na América Latina!

Tuesday 13 February 2024

IPTango

Encounter 32, The UPC after eight months: achievements and challenges?


On 21 February 2024, FIDE (Legal and Business Research Foundation) and TIPSA (Transatlantic Intellectual Property Academy) will hold the Encounter 32, The UPC after eight months: achievements and challenges?

The panellists are Rian Kalden (Second Panel of the UPC Court of Appeals) and Kevin Mooney (Simmons & Simmons). Emmanuel Gougé (Pinsent Masons) will moderate the session.

The suggested readings and the report on the session will be available on the Global Digital Encounters (GDE) website as time goes by.

The Encounter is offered free of charge, but registration is required. Register here now!

If you missed previous Encounters or want to watch them again, click here.

Credit: The image is courtesy of FIDE.
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Saturday 25 November 2023

IPTango

Encounter 31, Testing borders of IP rights: compulsory licensing and beyond

On 28 November 2023, FIDE (Legal and Business Research Foundation) and TIPSA (Transatlantic Intellectual Property Academy) will hold the Encounter 31, Testing borders of IP rights: compulsory licensing and beyond.

The panellists are Bruno Vandermeulen (Impact Licensing Initiative) and Prof. Dr. jur. Tilman Müller-Stoy (Bardehle Pagenberg). Wolf Meier-Ewert (WTO) will moderate the session.

The suggested readings and the report on the session will be available on the Global Digital Encounters (GDE) website as time goes by.

The Encounter is offered free of charge, but registration is required. Register here now!

If you missed previous Encounters or you want to watch them again, click here.

Credit: The image is courtesy of FIDE.
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Monday 18 September 2023

Verónica Rodríguez Arguijo

8th Session of the WIPO Conversation on IP & Frontier Technologies: Generative AI and IP


The World Intellectual Property Organization (WIPO) will hold the Eighth Session of the WIPO Conversation on Intellectual Property and Frontier Technologies (formerly WIPO Conversation on IP and AI) on 20 and 21 September 2023.

The theme of the eighth session is “Generative AI and IP”, aiming to bring together stakeholders to discuss the challenges generative AI may pose to the IP system and inter alia helping to establish best practices for the protection of creative works in the digital age.

The agenda comprises the following topics:
  • The Rapid Rise of Generative AI: Opportunities and Challenges Ahead
  • What is Generative AI and what differentiates it from other AI models?
  • Regulation of Generative AI: Do you feel the need… the need for speed? (Emerging Trends in Generative AI)
  • Generative AI – A Jack of Many Trades? (Generative AI: Use Cases)
  • A Mosaic of IP Issues: Painting the Full Picture of Generative AI and IP
  • Access to training data: Exploring Text and Data Mining (TDM) Exceptions, Fair Use, and Moral Rights
  • Authorship and Ownership of AI-generated Works: IP is all around
  • The Impact of Generative AI on the Creative Industries – a Tool for Human Creativity or Creative Destruction?
  • IP Strategies for Innovators and Creators in the Age of Generative AI
  • Generative AI for IP Administration: Applications and Pitfalls
  • How are Member States and IP Offices updating their guidelines to better accommodate IP issues related to Generative AI?
  • How are IP Offices dealing with applications written by ChatGPT?
  • Should IP laws be updated to reflect the use of Generative AI?
  • How can governments ensure that the use of Generative AI does not stifle innovation or competition in creative industries?
The list of speakers is available here. The event will be held in a hybrid format. Registration was open for WIPO members & Observers (onsite) and a wider audience (virtual). If you haven’t registered, the live webcast of the session will be available here.

If you have a craving for more WIPO on IP and AI, do not forget to review here a list of sources at the bottom of the article.

Image by Gerd Altmann from Pixabay.
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IPTango

3er Congreso Internacional de Propiedad Intelectual y Tecnologías Disruptivas


El 19 y 20 de septiembre de 2023 se llevará a cabo el 3er Congreso Internacional de Propiedad Intelectual y Tecnologías Disruptivas.

El evento es organizado por el Centro de la Propiedad Intelectual de la Facultad de Derecho de la Universidad Austral (CPI) y la Escuela Latinoamericana de Propiedad Intelectual (ELAPI).

El programa incluye panelistas de diversos países y está disponible aquí. Entre otros temas, se abordarán los siguientes:
  • Inteligencia artificial generativa: ¿promtear para generar obras?
  • Clonación de voz: ¿nueva oportunidad para los creadores o desafío de valor?
  • ¿El mundo jurídico offline es aplicable al online?
  • Nuevas fronteras en la gestión de la PI ante la piratería digital
  • Gestión de acuerdos de licencia con NFT
  • Perspectivas y desafíos regionales de la PI ante el mundo digital: diálogo con autoridades
  • Entender los aspectos claves de la transferencia de tecnología
  • Medicamentos y biosimilares: aspectos de regulación y protección de la PI
El evento es en línea y sin costo, pero se requiere inscripción previa. ¡Regístrate aquí!

Consulta más información sobre el Congreso aquí.

Crédito: la imagen es cortesía de ELAPI.
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Tuesday 22 August 2023

IPTango

INTA participates in the 43rd International Congress of ABPI


The Brazilian Association of Intellectual Property (ABPI) is organizing the 43rd International Congress from 20 to 22 August 2023 in Brazil’s beautiful city of Rio de Janeiro.

The year’s theme is ‘IP as a Promoter of Social Equality’. The programme includes artificial intelligence and challenges for copyright, the protection of famous marks, the liability of internet service providers, anti-piracy strategies, the Hague Agreement in Brazil and innovation policies, among others.

CEO of the International Trademark Association (INTA), Etienne Sanz de Acedo, is confirmed for the event’s closing plenary. He will participate in the session ‘Intellectual Property of the Future’ along with Kathi Vidal (United States Patent and Trademark Office), Sherif Saadallah (World Intellectual Property Organization), Gabriel Leonardos (president of ABPI), and Luiz Henrique do Amaral (Dannemann Siemsen).

Founded 145 years ago, INTA is a global association of brand owners and professionals dedicated to supporting the development of brands and intellectual property (IP) to foster consumer confidence, economic growth, and innovation. INTA has over 6,000 organizations and approximately 33,500 individual members from 181 countries (including students and academics).

The Latin America and Caribbean region’s membership comprises almost 650 organizations and 2,900 individuals. In this sense, Brazil has the largest membership in this region, with 95 organizations and 550 individuals. Through its INTA Foundation, the organization finances the specialization of diversity, equity, and inclusion of students at the University of Rio de Janeiro.

Review here more information about the 43rd International Congress and here about INTA.

Credit: image is courtesy of INTA.
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Wednesday 16 August 2023

IPTango

[Nuevo libro] Ley Federal de Protección a la Propiedad Industrial comentada por AMPPI


Recientemente fue publicada la obra colectiva "Ley Federal de Protección a la Propiedad Industrial comentada por AMPPI", coordinada por Miguel Ángel Ortiz Bahena e Itzel Estrada González.

El libro, editado por Tirant lo Blanch, es resultado de la iniciativa llevada a cabo por la Comisión Editorial de la Asociación Mexicana para la Protección de la Propiedad Intelectual (AMPPI) – grupo mexicano de AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle).

Como el título sugiere, la obra comprende el análisis de la Ley Federal de Protección a la Propiedad Industrial (LFPPI), misma que entró en vigor el 5 de noviembre de 2020 en México.

A lo largo de la obra, 77 autores (practicantes, académicos y jueces) dilucidan los siete títulos que conforman la LFPPI, así como sus 18 artículos transitorios.

En este sentido, nos complace compartir con nuestros lectores que Verónica Rodríguez Arguijo, miembro del equipo de IPTango, contribuyó a la obra con un capítulo sobre artículos transitorios, la aplicación retroactiva de disposiciones, delitos, responsabilidad penal de las personas morales y el esperado Reglamento de la nueva Ley en México.

A la luz de la publicación de la obra colectiva, el 24 de agosto de 2023 se llevará a cabo una presentación, en el auditorio Antonio Martínez Báez del posgrado de la Facultad de Derecho de la Universidad Nacional Autónoma de México (UNAM).

Dicha presentación contará con la participación de Alejandro Luna (presidente de AMPPI), Miguel Ángel Ortiz Bahena (coordinador principal de la obra), Carmen Arteaga (directora del seminario de patentes, marcas y derechos de autor de la Facultad de Derecho de la UNAM), Daniela Lucio (miembro de la Comisión Editorial de AMPPI), Itzel Estrada González (coordinadora de la obra y presidenta de la Comisión Editorial de AMPPI) y Sergio Olivares Nieto (presidente del comité de juventud).

Los detalles de la obra colectiva pueden consultarse aquí.

Crédito: imagen disponible en la cuenta de AMPPI en Twitter.
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Thursday 15 June 2023

IPTango

[Guest Post] Brazilian Patent Overview and Challenges for 2023!


IPTango is pleased to publish a guest post by Michelle Angelim and Leonardo Cordeiro (Gruenbaum, Possinhas & Teixeira), discussing the current scenario and challenges in the field of patent law in Brazil for this year.


As the world becomes increasingly innovative and technology-driven, it becomes more critical for a country to have fast and efficient patent prosecution. In recent years, Brazil has faced challenges in balancing interests in the intellectual property field, especially in the patent sector. Since the beginning of the pandemic, patents have been the focus of controversies and diverging interests, as balancing the legal, social, administrative, economic, and political influences in the Brazilian patent system is arduous.

Regarding the current Brazilian scenario, it is essential to emphasize that the country has been going through several changes, considering the recent government transitions.

One of these changes directly impacted the Brazilian Patent and Trademark Office (BPTO) because said Institute left the former Ministry of Economy and is now part of the Ministry of Development, Industry, Commerce and Services, which consequently generated significant changes in its directors and presidency. The current interim president, Dr Júlio Cesar Moreira (former Patent Director), has worked at BPTO for years and is one of those responsible for the implementations promoting good progress in the patent application prosecution, such as the backlog tackle project. This project defines, for example, the creation of the preliminary official action, which we will discuss below in more detail.

The backlog tackle project

The implementation of the collaborative examination, through the backlog tackle project, aims to reduce the number of pending patent applications substantially by using previously conducted prior art search reports from other patent offices, requesting amendments in the claims or technical arguments that defend the patentability of the invention over the cited prior art. This implementation has significantly improved the application prosecution, avoiding excessive official actions, promoting procedural economy, and reducing the time for resolution of the cases.

A) Preliminary official actions

A good strategy for complying with the preliminary official action is to conform the Brazilian application to an already allowed/granted or considered patentable subject matter of the same patent family. However, it is important to remember the need for adequacy of the amendments to the current legal provisions, such as the normative instructions and examination guidelines for different areas, to avoid related technical official actions. Furthermore, it is essential to take into account the national sovereignty over the examination, established by the
Paris Convention (CUP) in its Art. 4 bis (1); therefore, there are no guarantees that the Brazilian patent application will be immediately allowed because it was adapted to an application already granted in another country.

To submit a good argumentation before the BPTO, it is necessary to clearly explain how the technical characteristics of the invention solve the technical problem described. In addition, it is required to indicate the new technical effect achieved and the advantages in relation to the prior art, citing the lines and pages of the specification that contain this information. It is also important to comment on the cited prior art, highlighting the differences between the subject matter of the application and the cited prior art. This information should demonstrate that a person skilled in the art would not have sufficient resources or inspiration to create or achieve the claimed invention based on the cited documents.

B) Divisional applications and PPH agreements

A new practice that is becoming frequent is filing a divisional application at the moment of compliance with the preliminary official action. However, recently in this compliance, there has been a practice of conforming to the granted patent and filing a divisional application with a set of claims identical to the original ones. This practice has resulted in applicants' rejections and abandonments due to the difficulty of overcoming the objections.

In recent years, another relevant implementation was the creation of several diversified types of fast tracks and the BPTO signing PPH agreements with several countries (for more information about the countries, access the link). Accepting a fast track guarantees a reduction in the prosecution time from 10 - 12 years (average time of an application without fast track and not being part of the backlog tackle project) to 3 - 5 years up to the conclusion of the merit examination in the administrative sphere.

C) Article 32 of the IPL: amendments to the applications

In the prosecution of a patent application, a highly discussed point is the legitimacy of article 32 of the Industrial Property Law No. 9,279/1996 (IPL), which establishes that the applicant may proceed with amendments to the application until the request for examination, provided that these are limited to the subject matter initially disclosed in the application.

The examination must be requested within 36 months after the Brazilian or International filing date, and this is a crucial moment to perform amendments to broaden the scope of protection, for instance, increasing categories, moving the place of the characterizing term, changing categories, and others.

Based on the interpretation of the BPTO, established in resolution 93/2013, amendments must be based on the content initially disclosed and, after the request for examination, can only be performed to reduce the scope of protection or correct typographical errors, for example. Thus, discussions to make the BPTO's interpretation more flexible have been taking place in study groups, such as the Intellectual Property Interministerial Group (GIPI), where the applicant can proceed with amendments to broaden the scope of protection after the examination request, for example.

The National Strategy of Intellectual Property (ENPI), created in 2019, has been strengthening its position as a project to harmonize IP policies in the country, which restarted the GIPI as a technical entity with a thematic strategic plan that demonstrates the adequacy of the intellectual property sector to current needs, including the review of procedures.

Comments

It is essential to mention that the backlog tackle project was and continues to be a success in several technical areas, and, as a result, the backlog issue has now been practically solved in some areas and is advancing to end the backlog in others.

Therefore, based on the examples above, it is evident that Brazil is continuously working to become a more economically competitive country and of international interest without ceasing to value its internal innovation policies, yet, knowing its importance for the world's technological development.

Credits:
The first image is by Gerd Altmann from Pixabay.
The second image is by Ag Ku from Pixabay.
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Sunday 14 May 2023

IPTango

Encounter 27, Intellectual Property: A Key Tool for Museums


On 17 May 2023, FIDE (Legal and Business Research Foundation) and TIPSA (Transatlantic Intellectual Property Academy) will hold the Encounter 27, Intellectual Property: A Key Tool for Museums.

The panellists are Professors Laurent Manderieux (Bocconi University), Yolanda Bergel Sainz de Baranda (Universidad Carlos III de Madrid) and Dr. sc. Haris Hasić* (University of Travnik). Jur. dr. Ulrika Wennersten (Lund University) will moderate the session.

The suggested readings and the report on the session will be available on the Global Digital Encounters (GDE) website as time goes by.

The Encounter is offered free of charge, but registration is required. Register here now!

If you missed previous Encounters or you want to watch them again, click here.

Credit: The image is courtesy of FIDE.

Update: new speaker* has joined the panel. 

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Tuesday 28 March 2023

Verónica Rodríguez Arguijo

7th Session of the WIPO Conversation on IP & Frontier Technologies: IP and the Metaverse


The World Intellectual Property Organization (WIPO) will hold the Seventh Session of the WIPO Conversation on Intellectual Property and Frontier Technologies (formerly WIPO Conversation on IP and AI) on 29 and 30 March 2023.

The theme of the seventh session is “IP and the Metaverse”, aiming to bring together stakeholders to discuss the challenges the metaverse may pose to the IP system. The broad spectrum of frontier technologies enabling the metaverse, like AI, blockchain and the NFTs, AR and VR technologies, the Internet of Things and data processing, will be addressed.

The agenda comprises the following topics:
  • “All information looks like noise until you break the code” – Decoding the Metaverse.
  • Blueprints, plans and IP stories from the architects building the Metaverse.
  • Economics of the Metaverse.
  • Living, working and playing in the Metaverse: IP stories from the Metaverse.
  • A multiverse of IP issues.
  • The Future of IP in the digital economy and a fully virtual world.
  • DAOs, NFTs, smart contracts and other fantastic beasts and IP.
  • Playing games and knowing the IP score: content and more in the Metaverse.
  • Jurisdiction and enforcing IP rights in the Metaverse.
  • Realizing the potential of the Metaverse.
  • Sharing session (Member States and IP Offices) – Open floor interventions and discussion: exchange of current practices between IP Offices on work around the Metaverse.
  • Open floor interventions (all participants).
The list of speakers is available here. The event will be held in a hybrid format. Registration was open for WIPO members & Observers (onsite) and a wider audience (virtual). If you haven’t registered, the live webcast of the session will be available here.

If you have a craving for more WIPO on IP and AI, do not forget to review here a list of sources at the bottom of the article.

Image by Gerd Altmann from Pixabay.
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Friday 17 March 2023

Patricia Covarrubia

Trademark Infringement and Online Environment - let's make sure our research is up-to-date and writing with a purpose

    No comments:
This is my personal intake on the symposium I attended last week.

On Thursday the 9th (March 2023) I attended as a guest, the

Trademark Infringement and Online Environment Symposium/ Workshop.
The invitation came directly from Prof Xuemei Bian who together with David Humphries from UK IPO, are working on understanding the counterfeit market online and to propose a strategy. The project is funded by the British Academy and while this is based on UK, I thought the same is applicable to all jurisdictions as the online world is without frontiers. 

The guests and speakers came from different backgrounds, and different industries e.g., IPO, enforcement bodies (police), Law, Criminology, data analytics, marketing, Procter and Gamble, and Alibaba. The symposium took, and the project as such takes, into consideration consultations, advise and research focusing on collaboration for actionable solutions (aka interdisciplinary / cross sectors).

Xuemei & David opened the floor to provide us with a general view on the rationale of the work they are doing and what they are aiming at. For instance, this was the second symposium / workshops that they have organised, they have done plenty of literature review based on data /statistics looking at a better understanding, that is, to identify what has been done, what is missing, and to question if the available research done up to today, is relevant. This was a moment of reflection for me: could it be that we academics are focusing too much on the research part rather that its purpose? David noted that it is crucial to understand the economic and societal influence of social media and counterfeiting. He emphasised that research can make a difference, but it seems that academia works in silos – again, this was a reflection moment for me. He continued to note that the IPO and his role is to take a ‘helicopter approach’ (looking at the overall context); noting that it is evident that protection isn’t great and there is a need to work with the evidence and establish a counterfeit strategy (Look at the Intellectual Property Counter-Infringement Strategy 2022 to 2027 here). 

Evaluation of the IPO counter-infringement strategy 
Marianna Lemus-Boskovitch, and Teodora Lazar, from BOP Consulting presented their research from the consumer perspective; advertising communication and how consumers react and its impact – based on counterfeits. They have done interviews to gather what sources are available and did a data gap analysis showing indicators to build upon. This was done to test what material / information is out there, stating that they did a theory approach. David closed this part of the session by indicating that ‘monitoring and evaluation’ is a good start! 

Online / Social media IP infringement 
David Shepherd, Senior Lecturer in Economic Crime, University of Portsmouth presented ‘The impact of complicit social media influencers on consumption of counterfeit goods in the UK’. After showering us with charts, and statistics, I could be bias to report what I got from his presentation: women are more cautious when buying online than men! David run a survey during 2021 in both sexes and covering 16-60 yrs. old. The survey showed that 31% of men purchased endorsed counterfeits while women 13%. In any case, the majority knew they were buying a counterfeit. What is of worry, which I do agree, is that there are certain product categories, that are dangerous e.g., batteries and beauty product (due to the chemical components). He also acknowledged that there is a percentage of buyers that are ‘hunters of counterfeits’ [was I under a rock that I did not know much about it?]. The survey also revealed that we are susceptibility to trust others e.g., family, friends, and influencers, and their influence varies as it seems to be age related. Another part of the survey showed that the rationale of consumers to purchase counterfeits there was a correlation when ‘price is high, and the quality is not important’. 

Ronald Brohm, managing director at REACT, intervened to talk about his experience noting that the ‘online world’ and the ‘trading’ includes apps, social media, stating that legislation is behind. Notices of ‘take down’ to links, and hiding links, seems straightforward but it gets complicated with apps and social media. A burden encountered with, is the definition of what ‘trade’ is. He explained that in China, one need to have a license to trade, and enforcement is less complex as it is easy to identify traders; and while the system is not perfect, this practice shows a good practice. Tackling global online / social media counterfeiting -technology and implications.
Dennis Collopy, Senior Research Fellow, University of Hertfordshire, spoke about artificial intelligence and IPRs enforcement (IPO commissioned this research in 2021) how to use AI in the matter of copyright, trade marks and trade secrets infringements. He has done a literature review on the matter and conducted a survey by interviewing different individuals, e.g., from the judiciary, NGOs, etc. Looking at data mining it seems that there is a big challenge regarding training data and to use just ‘clean’ data rather than bias, and noticed the lack of transparency (due to the black box) and in general about the quantity and quality of data fed. Data must be updated constantly, needs retraining, to follow GDP compliance, finally, concluding the session, his point noted the need of a ‘revolution on Data Quality’ and that, in his opinion, the AI challenges that are identified exceeded the number of opportunities [I personally believe that we get to excited about AI without reflecting the risks] . 

Sharon [left] Andrew [right]
From the point of view of Andrew Masterson, a member of the PIPCU team, City of London Police he presented his experience, but also noted that how can the law enforcement rely on the AI due to the matters raised by Dennis. Another matter that was noted by Sharon Penketh, Manager Global Brand Protection eBusiness, at Procter & Gamble, is whether companies have the resources to apply AI.

Improving IP protection and enforcement in the digital economy
Muhammad Asif Khan and Yu Ye, Assistant Professor in & Lecturer in Digital Marketing, from Northumbria University presented ‘The findings of a comprehensive systematic literature review on Trademark Infringement in the online as opposed to offline economy’. They did a systematic literature review on trade mark infringement – what information is available on this by business and management, computer science and law, extending to industry report/data. Some of the keywords used were infringement, duplicate, imitation, competing, replica, copycat, counterfeit, fake. They noted the next step will be text mining: such as a key themes and gaps in the literature; to analyse the structure of the data; and to raise potential approaches. During the talk, I was made aware of Leximancer, did you know about this? a platform that analyses text documents and in the case of IP it does an advanced trade mark similarity assessment models [did I get this info right?].

Claudio Bergonzi, Director Global IP enforcement, at Alibaba Group, concentrated in four points: 
1) establishing good programmes – what IPRs are there;
2) proactive use of AI; 
3) offline corporation – law enforcement (what is behind, distribution networks); and 
4)cooperation with rightsholders. 
For instance, he mentioned the quantity of consumers they have, in how many countries they put their products on, and how many they deal with by day. For them, it is essential to know what IPRs there are and to whom they belong to and emphasised the importance of cooperation from traders. Noted that Alibaba uses AI, and they continuously feed data. They also work heavily on identifying legitimate products – and work also on counterfeit prevention ( by recording images). Talking about fakes, he gave an example which again, I think I am living under a rock!, anyways, he mentioned influencers telling followers like ‘buy this green t-shirt from Alibaba and use this code and you will get a fake [luxury fashion brand bag]’ what?!!! He continued to cover the matter of fake reviews –which is feeding to AI.

The two posters on display
The day closed with ‘Seed corns for collaborative projects – the findings of PhD research project’. Sadia Haque, PhD Researcher, Northumbria University presented ‘Brand protection marketing campaign messages, do they work and why?’ Jaishree Prasad, PhD Researcher, Northumbria University presented ‘Why should we even care about brand infringement when our brand is not counterfeited?’ I had the opportunity to speak to them before their presentation as they displayed their posters during the coffee breaks and lunch time. Both junior researchers were enthusiastic about their topics, as well as to be close to finishing this chapter of their life, a PhD. Their topics were topical to the workshop as they presented both quantitative and qualitative research on the matter of counterfeit. Jaishree made reflect upon one of her many findings, which is that the ‘impact of non-luxury brands in the sale of counterfeit bags is greater than to the luxury brands.’ And it does make sense, because rather than expending $50 in a bag from a high street shop, a consume can get from same price, a fake luxury fashion brand bag. It does harm the non-luxury shop as the consumer is their regular, that consumer will NOT buy the original luxury one. Sadia’s examined the messages delivered by campaigns to stop counterfeiting; one of her early conclusions, based on evidence, is that the ‘force’ of the message to make an impact should vary depending on the receiver. This means that we consumers, receive messages differently in accordance to our background.

A very fruitful date. Thanks for the invite and looking forward to working with you in any future project. 
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