Category: Uncategorized

Interview with Przemyslaw Witas, General Counsel at CEDC Poland.

   

Przemyslaw Witas

 CEELM: You’re the GC for CEDC in Poland. How much of your time is spent on IP matters?

PW: CEDC is a brand-oriented company, as is the entire Russian Standard Vodka group that we are a part of. Our brands make us unique player on what is a very competitive alcohol beverages market. This is the absolute must for me to spend time on the IP matters. They take from 30% to 60% of my time, depending on the brief. However, there are days when it is 100%. 

This is a very interesting development for me; I joined CEDC as the senior Corporate/M&A person. That was my main profile after many years at Clifford Chance. During recruitment, I was told that IP would be on my agenda, but initially it was not a priority, as we focused on building the in-house legal function from scratch. I joined CEDC, originally the distributor, in a transition time, as they were becoming more and more brand-oriented. CEDC was built through acquisitions, with key brands inherited from a state-owned company. When CEDC wanted to expand its business, including exports, it became clear thattrademark issues had not been attended to properly by the previous owner. This is when IP entered my agenda. 

I remember that after my first few months, management asked me to sort out the payment issue with the US IP counsel in New York. I got in touch with him and started to discuss different issues, and my eyes opened wider and wider. The conclusion was: There is a lot to do to protect our brands. Apparently, the cash flow opened the IP world for me. We reviewed relations with external IP counsel regarding our trademark portfolio in different jurisdictions. Shortly, we established an in-house IP function to handle issues from regular maintenance to ad hoc litigation. This is how my IP journey started and it continues. 

I do not have the comfort to attend to IP issues exclusively, but indeed, I spend a lot of time on IP, managing key projects. It is a good example that lawyers must be ready to learn new things all the time. It is a challenge, but an enjoyable one! 

 CEELM: Is Poland’s protection of trademarks fairly robust compared to other European markets?

PW: Yes, Poland definitely provides a robust system. The awareness of IP rights continues to grow among businesses, the courts, and other authorities. The relevant legal environment is in place. IP protection at the customs level works very well in Poland. There are both administrative and civil law regulations that provide all necessary protection if used professionally. 

On the civil law track, the Court for the Community Trademarks and Designs proceeds very efficiently, rendering fact-track and well-supported decisions, maintaining a unified approach. On the administrative law track,  Poland’s Patent Office proceeds relatively slowly, but there is also a lot of improvement in both the speed and the quality of its decisions – which are based on both Polish and EU case law.  

 CEELM: Do you see/expect any significant changes in IP practices, regulation, or legislation coming soon? 

PW: The European Commission prepared a large revision of the Trademark Directive and Trademark Regulation. When implemented, Poland would need to shift from the current system of the ex officio examination of the relative grounds for refusal of trademark protection to the system which is used by the EU trademark authority, the Office of Harmonization of Internal Market (OHIM). There would be no ex officio examination of relative grounds (just  absolute ones), and this kind of examination would be possible upon opposition or cancellation only. 

As far as national legislation is concerned, there is a plan to revise our main IP act – the Industrial Property Law of 2000. The legislative works are at an initial phase but the current guidelines suggest important changes, such as the long-awaited introduction of the so-called letters of consent, streamlining of the procedures at the Polish Patent Office, and improving the use of electronic communications with the Patent Office.

 CEELM: Have you had any particular problems registering or protecting CEDC’s trademarks, in Poland or anywhere else?

PW:  IP protection is dependent on the subjective interpretation of some general rules by the courts and authorities – and this is where some frustration comes from. The Patent Office tends to be more conservative, as its decisions are linked to a simple trademark similarity examination, while the civil law courts are more open to a market-orientated approach and the business context of trademark infringement. The common issue across different industries is that trademark owners’ expectations with regard to the scope of protection are wider than to the ones established under the court or authorities’ decisions. 

In recent years, the trademark authorities have tended to limit the scope of protection of registered trademarks. This concerns especially the complex, non-traditional trademarks consisting of various elements (e.g. word, figurative, three-dimensional). New conflicting trademarks are often found dissimilar  and oppositions are dismissed. This is not something specific for Poland, as it happens in other jurisdictions across Europe as well. 

As we have a significant international trademark portfolio, we also face some local issues in jurisdictions outside Poland. For example, the lack of publicly-used trademark databases maintained by local Patent Offices (a particular problem in Kazakhstan, for instance) or unusually lengthy application and maintenance procedures (such as in India, where our application filed in 2006 is still pending). 

The concept (established in the US and other jurisdictions) of strict trademark use as a necessary requirement to obtain and maintain a trademark registration, although based on an “open market” concept, is also a challenge since the labels evolve and change and it is sometimes difficult to correlate product launch with mandatory procedures of local trademark offices.

 CEELM: Do you see a benefit in retaining international law firms to handle your IP matters, or are you comfortable/confident in retaining IP boutiques?

PW: One global counsel certainly provides a comfort, but it comes at huge costs since you need to pay for all coordination work that they provide. Only at a certain level does it make sense to go for this system. 

At CEDC Poland we use the IP boutique model at the moment. We usually instruct different counsel in different jurisdictions, based on our know-how and the counsel matrix that we developed over the years. I still believe that a choice of legal counsel should be based on the lawyer, and not firm-driven. We can still afford this type of approach. 

Obviously, the top international law firms usually provide  top quality service across different jurisdictions, so you still end up using them for your major international projects. The level of service integration achieved by some of the London-based firms is impressive. 

On the other side, New York elite firms still act through their referral firms when it comes to Poland or other CEE markets, and they can achieve very positive results. The only workable solution for us is to come out of a comfort zone, use know-how and experience and make the effort to search for the best solution in the circumstances instead of sticking to the regular, well-familiar choices of the past.  

 CEELM: Do you have lawyers working under you – in-house – who focus only on IP matters?

PW: Yes, we do. I have one experienced IP lawyer on my team, handling ongoing trademark maintenance as well as innovative projects from brand development to litigation. We work closely together as I need to stay on the top of all important IP projects, due to the high focus of our management on  IP-related issues. My IP colleague handles domestic maintenance work in-house and manages local counsel on different projects in different jurisdictions. Our “crown jewel” trademark – Zubrowka – is registered in different forms in more than 100 jurisdictions. There is a lot of a work at CEDC when it comes to trademarks!

 CEELM: What would you like to see – what would help you sleep better at night – from an IP perspective?

PW: Generally, I would like all those in the market place to focus on their own inventions and play fair. Only fair competition brings value for the business and the consumers. Unfortunately, there are still those “smart” individuals around whose main agenda is to build on others’ ideas and assets. This is why the legal function is crucial for any brand-orientated business. 

We need to protect IP assets continuously, otherwise we would end up with a diluted brand of no value meaning we can close the business. This is the general brief that we implement every day. When it comes to the legal environment, despite all the improvements made by the Polish legal system in recent years, I would be happy to see even faster proceedings along with more consistent, transparent, and predictable case-law. 

We also need more understanding from the authorities when it comes to protection of reputable trademarks, to find a proper balance between the interest of a reputable trademark holder and the interest of other market participants. Holders of reputable trademarks make huge investments in their brands to keep a high quality level and a sophisticated image. Due to different case law still in place, there is lack of certainty on the part of the holders of reputable trademarks as to the real borders of protection, including which trademark infringement cases can be successfully pursued.

Interview with Przemyslaw Witas, General Counsel at CEDC Poland.

   

Przemyslaw Witas

 CEELM: You’re the GC for CEDC in Poland. How much of your time is spent on IP matters?

PW: CEDC is a brand-oriented company, as is the entire Russian Standard Vodka group that we are a part of. Our brands make us unique player on what is a very competitive alcohol beverages market. This is the absolute must for me to spend time on the IP matters. They take from 30% to 60% of my time, depending on the brief. However, there are days when it is 100%. 

This is a very interesting development for me; I joined CEDC as the senior Corporate/M&A person. That was my main profile after many years at Clifford Chance. During recruitment, I was told that IP would be on my agenda, but initially it was not a priority, as we focused on building the in-house legal function from scratch. I joined CEDC, originally the distributor, in a transition time, as they were becoming more and more brand-oriented. CEDC was built through acquisitions, with key brands inherited from a state-owned company. When CEDC wanted to expand its business, including exports, it became clear thattrademark issues had not been attended to properly by the previous owner. This is when IP entered my agenda. 

I remember that after my first few months, management asked me to sort out the payment issue with the US IP counsel in New York. I got in touch with him and started to discuss different issues, and my eyes opened wider and wider. The conclusion was: There is a lot to do to protect our brands. Apparently, the cash flow opened the IP world for me. We reviewed relations with external IP counsel regarding our trademark portfolio in different jurisdictions. Shortly, we established an in-house IP function to handle issues from regular maintenance to ad hoc litigation. This is how my IP journey started and it continues. 

I do not have the comfort to attend to IP issues exclusively, but indeed, I spend a lot of time on IP, managing key projects. It is a good example that lawyers must be ready to learn new things all the time. It is a challenge, but an enjoyable one! 

 CEELM: Is Poland’s protection of trademarks fairly robust compared to other European markets?

PW: Yes, Poland definitely provides a robust system. The awareness of IP rights continues to grow among businesses, the courts, and other authorities. The relevant legal environment is in place. IP protection at the customs level works very well in Poland. There are both administrative and civil law regulations that provide all necessary protection if used professionally. 

On the civil law track, the Court for the Community Trademarks and Designs proceeds very efficiently, rendering fact-track and well-supported decisions, maintaining a unified approach. On the administrative law track,  Poland’s Patent Office proceeds relatively slowly, but there is also a lot of improvement in both the speed and the quality of its decisions – which are based on both Polish and EU case law.  

 CEELM: Do you see/expect any significant changes in IP practices, regulation, or legislation coming soon? 

PW: The European Commission prepared a large revision of the Trademark Directive and Trademark Regulation. When implemented, Poland would need to shift from the current system of the ex officio examination of the relative grounds for refusal of trademark protection to the system which is used by the EU trademark authority, the Office of Harmonization of Internal Market (OHIM). There would be no ex officio examination of relative grounds (just  absolute ones), and this kind of examination would be possible upon opposition or cancellation only. 

As far as national legislation is concerned, there is a plan to revise our main IP act – the Industrial Property Law of 2000. The legislative works are at an initial phase but the current guidelines suggest important changes, such as the long-awaited introduction of the so-called letters of consent, streamlining of the procedures at the Polish Patent Office, and improving the use of electronic communications with the Patent Office.

 CEELM: Have you had any particular problems registering or protecting CEDC’s trademarks, in Poland or anywhere else?

PW:  IP protection is dependent on the subjective interpretation of some general rules by the courts and authorities – and this is where some frustration comes from. The Patent Office tends to be more conservative, as its decisions are linked to a simple trademark similarity examination, while the civil law courts are more open to a market-orientated approach and the business context of trademark infringement. The common issue across different industries is that trademark owners’ expectations with regard to the scope of protection are wider than to the ones established under the court or authorities’ decisions. 

In recent years, the trademark authorities have tended to limit the scope of protection of registered trademarks. This concerns especially the complex, non-traditional trademarks consisting of various elements (e.g. word, figurative, three-dimensional). New conflicting trademarks are often found dissimilar  and oppositions are dismissed. This is not something specific for Poland, as it happens in other jurisdictions across Europe as well. 

As we have a significant international trademark portfolio, we also face some local issues in jurisdictions outside Poland. For example, the lack of publicly-used trademark databases maintained by local Patent Offices (a particular problem in Kazakhstan, for instance) or unusually lengthy application and maintenance procedures (such as in India, where our application filed in 2006 is still pending). 

The concept (established in the US and other jurisdictions) of strict trademark use as a necessary requirement to obtain and maintain a trademark registration, although based on an “open market” concept, is also a challenge since the labels evolve and change and it is sometimes difficult to correlate product launch with mandatory procedures of local trademark offices.

 CEELM: Do you see a benefit in retaining international law firms to handle your IP matters, or are you comfortable/confident in retaining IP boutiques?

PW: One global counsel certainly provides a comfort, but it comes at huge costs since you need to pay for all coordination work that they provide. Only at a certain level does it make sense to go for this system. 

At CEDC Poland we use the IP boutique model at the moment. We usually instruct different counsel in different jurisdictions, based on our know-how and the counsel matrix that we developed over the years. I still believe that a choice of legal counsel should be based on the lawyer, and not firm-driven. We can still afford this type of approach. 

Obviously, the top international law firms usually provide  top quality service across different jurisdictions, so you still end up using them for your major international projects. The level of service integration achieved by some of the London-based firms is impressive. 

On the other side, New York elite firms still act through their referral firms when it comes to Poland or other CEE markets, and they can achieve very positive results. The only workable solution for us is to come out of a comfort zone, use know-how and experience and make the effort to search for the best solution in the circumstances instead of sticking to the regular, well-familiar choices of the past.  

 CEELM: Do you have lawyers working under you – in-house – who focus only on IP matters?

PW: Yes, we do. I have one experienced IP lawyer on my team, handling ongoing trademark maintenance as well as innovative projects from brand development to litigation. We work closely together as I need to stay on the top of all important IP projects, due to the high focus of our management on  IP-related issues. My IP colleague handles domestic maintenance work in-house and manages local counsel on different projects in different jurisdictions. Our “crown jewel” trademark – Zubrowka – is registered in different forms in more than 100 jurisdictions. There is a lot of a work at CEDC when it comes to trademarks!

 CEELM: What would you like to see – what would help you sleep better at night – from an IP perspective?

PW: Generally, I would like all those in the market place to focus on their own inventions and play fair. Only fair competition brings value for the business and the consumers. Unfortunately, there are still those “smart” individuals around whose main agenda is to build on others’ ideas and assets. This is why the legal function is crucial for any brand-orientated business. 

We need to protect IP assets continuously, otherwise we would end up with a diluted brand of no value meaning we can close the business. This is the general brief that we implement every day. When it comes to the legal environment, despite all the improvements made by the Polish legal system in recent years, I would be happy to see even faster proceedings along with more consistent, transparent, and predictable case-law. 

We also need more understanding from the authorities when it comes to protection of reputable trademarks, to find a proper balance between the interest of a reputable trademark holder and the interest of other market participants. Holders of reputable trademarks make huge investments in their brands to keep a high quality level and a sophisticated image. Due to different case law still in place, there is lack of certainty on the part of the holders of reputable trademarks as to the real borders of protection, including which trademark infringement cases can be successfully pursued.

Interview with Murat Vanlioglu, Head of Legal for Shell Companies in Turkey.

   

Murat Vanlioglu

 CEELM: How did you get to Shell? How did your career end up with you here?

MV: A head-hunter found me. It was just a coincidence. They were looking for a legal manager for Shell, and they found someone who “gave up” a couple of days later after she began to work, and so they urgently needed to find a counsel. They found me through a colleague that was working in their office who knew me from my previous career with Sabanci Holding. She called Sabanci and said “where’s Murat?”, and they were directed to my new office, stating that “I found you from this this this this,” and asked if I was interested in a new job opportunity. I said no, because at that time I was working for Toyota, and would be having an expat job in Brussels at Toyota’s center. But she said “don’t say no immediately – this is Shell.” And I said “I’ll consider it.” (laughing)

 CEELM: Did they bring you on as Head of Legal?

MV: Yes. I was recruited as Head of Legal in 2006 and worked as a Head of Legal at Toyota as well.  

 CEELM: Ok. And you were at Ernst & Young before that, right?

MV: Yes; I was in charge of Mergers & Acquisitions in particular cross-border deals as well as some privatization projects of state owned banks.  

 CEELM: You were at several banks in the beginning as well, right?

MV: Yes, I started my career with banks as an Execution and Bankruptcy attorney, collecting credit card debts. It was a challenging way to learn how a contract can be executed in real life. That period of my career taught me that without properly understanding the execution process of  contracts, a lawyer should not draft it. So I worked hard and spent long working hours during the first 3 or 4 years of my  career in banks. Indeed, I started from scratch, and began my career by bringing files from the archives of the court execution office.

 CEELM: Really?

MV: Yeah. In Pamuk Bank I first started to chase after credit card debts, then afterwards I went on dealing with commercial credits, bigger loans that were requiring liquidation of mortgages, and more complicated things. Then I said “this is enough – no more debt collection.” At that time there was a newspaper advertisement, and I applied. It was Toyota, and they hired me. I was the only one that never had any sponsor behind me. Out of the hundreds of applicants, they all had some connection with someone else, and I was the only one who has no connection with anyone.

 CEELM: You didn’t have a particular interest in the Oil & Gas industry starting out?

MV: Starting out, no.

 CEELM: Ok. Are there special challenges to that industry now?

MV: Yes. Different. Actually, before I was recruited, in the interview, the CEO of the company said, “it is too challenging.” And I said, “no, it’s not too challenging.  It’s a piece of cake. I am a lawyer, I can do anything, anywhere, and the legislation is almost the same, except some specific industry related issues.” And I was right. The primary laws are the same: corporate laws, commercial laws, and code of obligations are the same. What was different was the energy laws – and some different industrial practices. In the motor vehicle industry people hardly sue each other.  

 CEELM: You mean competitors?

MV: No, dealers! They have 50 or 60 dealers, those are indeed big investors, good businessmen, very reputable persons in their local areas, and they would feel ashamed to be in court. So you can sign any kind of deal – negotiated, of course, but you do everything through negotiation. I had just 10 litigation cases throughout my employment in Toyota. In the oil industry everybody sues each other.  (laughing).  It’s crazy. Dealers sign the contracts with a distribution company, and 5 minutes later another company offers a bit more, then the dealers break the contract they had just signed with you 5 minutes ago. Then we have to go to court. There are hundreds of cases like that. This is the world, completely different.

 CEELM: Okay. How would you describe your job, what you do?  I know that’s a general question, but what’s your job?

MV: Actually I am the country legal head. I do everything. From corporate, I’m the corporate secretary of the joint venture – I’m in charge of keeping everything in compliance with the law and regulations, and everything in accordance with the principles. 

 CEELM: The “joint ventures” are Shell and Turcas?

MV: Shell and Turcas.  Turcas is the minority shareholder/local partner. This is the downstream joint venture. There are also other joint ventures. This is the reason why I tend to describe myself as a joint ventures expert. I’ve been working with joint ventures starting with Toyota for almost 17, 18 years. In a joint venture all corporate issues, decisions, you name it, need to be governed in line with the joint venture agreement’s principles. Neither the shareholders nor the expat officers know the details of it.  The partners signed the contract with their lawyers, then they put it on the shelf. Therefore, when holding Board Meetings, or getting investment resolutions, I have to ensure full compliance with the joint venture agreement. For example, investments exceeding a  certain limit need to be approved by the Board. So if you miss that kind of thing it may create a conflict between the shareholders, which you never want. These kinds of things are important.

 CEELM: You must have the joint venture memorized by now.

MV: Not memorized, but it is a really good agreement, so you need to be careful about it. Other than this, I founded various joint ventures with different companies, for example for upstream organization, Shell established three joint ventures with a national oil company in Ankara, for an onshore unconventional project and two conventional deep water projects. It is important to know how to negotiate a JV agreement, where to look in the joint venture agreements. If you know the priorities and which provisions you need it is easier to conclude the agreement. Each party has different priorities, discussing them openly and finding mutual solutions to both parties’ needs indeed brings pretty quick deal closings. So I created that kind of value, in terms of negotiations with counter-parties.  

 CEELM: I see. You also oversee the litigation process, right?

MV: Sure. I am the head of the litigation process; I draw up the strategy and give priorities to my colleagues who are going to follow the case. After we agree on the framework, my colleagues follow up the case by themselves. There is full delegation and my colleagues get the full pride of the job they are doing. Sometimes, based on the peculiarity of the case, we hire external counsel to follow the case, but it is generally done in-house. Strategy is indeed important and sometimes you even need to challenge the expert barrister following the case.

Just an example. There was a decision from the Court of Istanbul about an inconvenient forum. The court decided that it was not authorized to hear the case. And then decided to send the docket to Bakirköy courts, which is about a kilometer away. The barrister at that time proposed not to appeal. He said, “it is just a matter of two kilometers away.” I said, “no, you should go to the Court of Appeal, because the justification of the award is very risky for us, and it may lead to us losing the main case in the future. By appealing we’ll lose a year, this is for sure. But its very likely that the decision of the court of first instance will be repealed by the Court of Appeal, and then we will have a strong ground to defend against the same judge.

 CEELM: This is another sort of general question: What do you like about working with Shell? 

MV: Shell is, first of all, an honest company. Honest, straight-forward, respectful of people. You are supposed to comply with the law and regulations, in particular those against corruption. For instance you cannot provide gifts to an officer, and you cannot accept gifts from someone else – you need to do your job with honesty and integrity.

 CEELM: That’s too bad.  No gifts for you. (laughing)

MV: No, it’s really good. It’s really good indeed. Sometimes people abuse it. So if you start accepting gifts – one porcelain cup, for example, as a new year’s gift, then it starts coming with a silver mug next year (laughs). And there’s no end to it. This principle of Shell is very good. Shell values people, Shell values diversity. What is important is that Shell values intelligence and opinion. So you are always free to speak your mind. You can challenge whatever your boss says. All employees feels that everybody is equal, you are free to speak your mind, you are invited to challenge, your are free to blow the whistle, and you are provided with equal opportunities to climb the career ladder.

 CEELM: And you are empowered to …

MV: … to speak your mind.  Even in front of the CEO of the group.

 CEELM:  And that’s not just an advertising slogan? You’re being honest with me?

MV: Absolutely. All employees know that if someone or management does something wrong, or does not follow Shell business principles and ethics, they have the right to blow the whistle and contact the business integrity department, the complaint will surely be investigated and consequences applied. A whistle-blower’s identity is always kept secret so he is never exposed. This creates trust with your employer. Honesty and integrity are always valued by Shell.

 CEELM: But even in terms of the working environment and culture, people are encouraged to challenge and think, and … interact.

MV: Yes, indeed people are encouraged to challenge. Also the organization is flat, rather than a vertical organization. So everyone is able to speak their minds. This is embedded in the Shell culture. This is the way I like it. I did not observe same thing with most of the companies unfortunately .

 CEELM: I was going to ask. You’ve worked enough other places. Do you think that’s relatively unusual about Shell? I mean in Turkey.

MV: (nodding head): I enjoy Shell. In Turkey this is also unique. Our culture is in-between East and West. Eastern company cultures are more hierarchical, more strict than our culture. You are from the West (gestures at me), and your culture is much more similar to what I am explaining here in Shell.  But some eastern companies are on the extreme. You are unable to speak your mind. It can be considered rude to speak in front of a senior person without getting permission and often only a senior guy can speak unless you are asked something. You would not feel valued under such a culture

 CEELM: And that filters down even to the Turkish offices?

MV: Everything, everything.

 CEELM: And the Shell model filters down here as well.

MV: Some Eastern companies prefer to hire average persons from average universities. Deliberately avoid hiring high fliers. Average people tend not to challenge but follow the standard path: Follow the rules, follow the bureaucracy, and do not challenge the boss. 

 CEELM: I see. So it’s the system that’s going to guide that, whereas at Shell it’s the personalities, intelligence.

MV: Exactly, exactly. Here, the intelligence of people is creating something. And in particular the higher levels of the Shell organization are full of high-fliers, they have bright ideas, lead people, motivate people. Leadership attributes are really important with Shell.  

 CEELM: When you started here, what was the most surprising thing you found here? Was there something about the culture, or the work?

MV: Comparing my past work experiences there is a full compliance culture here. I have seen in some companies that they prefer not to follow the rules sometimes. For example some companies didn’t allow the establishment of a union in their factories despite the fact that it is absolutely a legal right for employees. I also observed that some companies fired people just because those people were member of a union. Here in Shell such things never happen. Besides Shell actively supports employees to form a union and perform their rights and duties thereof. Therefore it is a completely different compliance culture and I appreciate it very much.

 CEELM: Ok. How would you describe your personal management style?

MV: Open, transparent and collaborative. And I always act with a commercial mindset. Ah, I can say it’s a round-table policy, first of all. Round-table is important. Round-table means everyone is equal and can speak their minds.

 CEELM: It sounds like the Monday morning meetings is an example of that.

MV: This is a good example indeed. Although it’s not a round table, it’s a rectangular table (laughing). So we have breakfast, freely speak everything, we make jokes. It’s a very warm environment. Even the post-graduate students working on training contract basis. Everybody is free to speak. So we discuss everything. We generally discuss day-to-day issues. Sometimes there are strategic issues, and we organize specific meetings to review those kinds of cases. But what is most important for me is  openness, transparency, and free communication. Open communication first builds bridges between people, people do not second-guess what you say. It develops a strong buy-in from people to the tasks that we are going to perform. It improves motivation and most importantly it helps development of young talents because they learn from others in an open environment.

 CEELM: If they have questions they can pop their head in and ask?

MV: Sure, yes. And they can challenge! Sometimes I am wrong. I do honestly accept their views. In law there is no senior view that is prevailing over others, there are different views, and arguments – which is natural. Therefore we discuss freely, sometimes I accept even the students’ point of view, which may be right rather than mine.  

 CEELM: Okay. I want to ask a few questions about how you work with external counsel. How do you decide what matters – you said most litigations you keep internal – what do you do with external counsel?

MV: The jobs that are not in our professional experience, such as criminal issues. We prefer to hire expert external lawyers in such matters.  

 CEELM: IP, Criminal Law, those are the main issues?

MV: Main areas. And some serious matters, I mean, there are some court cases that are high value cases.  I personally follow Administrative cases with government authorities.

 CEELM: I see. And how do you select those firms you work with, when that happens?

MV: Depending on the knowledge and experience in the industry. There are two law firms here certified by Shell.

 CEELM: Certified internationally, or …?

MV: Certified internationally, those we call “panel law firms.” We sometimes work with them for some global issues. But there are other lawyers, known in specific areas. For example, Professor Cevdet Yavuz is an expert in the code of obligations. Once a case comes to us related with his area, we consult with him. We generally take a written opinion from him, and then we establish our case based on the legal opinion. For commercial issues we go to another professor, for example Professor Hamdi Yasaman, who is very good in commercial cases.

 CEELM: So you generally have consulting professors, rather than law firms.

MV: It does not necessarily have to be professors; let’s say experts in a relevant area.

 CEELM: Individuals, not so much firms.

MV: Individual lawyer is much more important for me rather than the name of the law firm. In the end it is the individual who does the job, not the expensive firm.

 CEELM: When you hire laterally, when you bring lawyers on to your team, what do you look for more? Do you look for lawyers coming from in-house, maybe even in the Oil & Gas industry, or from law firms? What’s more important?

MV: It doesn’t matter. What we look for is honesty, integrity, collaboration, and working in harmony. Of course intelligence is important to learn and deliver quickly.

 CEELM: So does that mean an interview is more important for you than the resume?

MV: Yes. The interview is much more important. And in the interviews we give candidates a case study, where he reads something for 20 minutes, then there are questions out of the case study, so it gives the candidates legal background, ability to interpret things, his mindset and how to approach business issues. Then we can understand, this is a person we can work with.

Poland is a party to all major international treaties concerning intellectual property, including the Paris Convention, Berne Convention, Madrid Agreement, the Patent Cooperation Treaty, and the European Patent Convention. Furthermore, Poland’s access to the European Union in 2004 extended the Community’s trademark and design system to Poland. All of the agreements mentioned above recognize Poland as a country with a level of IP protection that respects and complies with the European standards.

Regardless of the recent approach to the Unified Patent System, the Polish government has recognized how crucial  providing and maintaining appropriate solutions affecting an increase in innovation is for economic growth. Within the last few years, many steps have been taken and new ones approach on the horizon. The Polish government has started and continues several programs designed to assist small and medium entrepreneurs in developing innovative services and solutions. Special emphasis has been put on several areas of the economy creating special clusters, such as, for instance, an aviation cluster. In addition, a  “Patent Plus” program has been introduced, providing up to EUR 200,000 in state aid  to inventors and entrepreneurs wanting to commercialize and protect an article of intellectual property. Under this program, any new emerging creative mind may acquire a grant, which covers all steps involved in developing, building, testing, and protecting a new invention.

Improving the enforcement of IP rights is probably the most serious issue that Poland needs to resolve in the next few years. The major problem involves the scarcity of courts  specialized in IP. Cases which involve complicated IP matters such as patents are brought before random judges who often do not posses sufficient experience – if they have any at all – in litigation of issues involving IP law, let alone the technical skills to assess the object of the litigation. These situations lead often to scenarios where a judge deciding a particular case relies primarily on the opinion prepared by a court expert in the particular technological field. Experts, however, although experienced in the understanding of technical conditions of the invention, do not have knowledge of IP laws, which often results in biased and one-sided opinions. Thus, judge’s decisions are made based upon expert opinions that themselves contain only a partial understanding of the subject. 

As a result, the current system ends up putting IP owners at a great disadvantage. Results of litigated cases are difficult to predict in advance, even for experienced lawyers, and because of that risk IP owners tend to be hesitant in enforcing their rights in Poland. The sole exception is Community trademarks and designs, which are litigated in front of a specialized court in Warsaw. The speed of the proceedings and high quality of the verdicts issued by that court shows that Poland should consider establishing specialized courts for other forms of IP as well if it wants to promote innovators.

Another weakness is related to the low awareness of intellectual property rights among the public. However, this tends to slowly change. At the moment, scientists and entrepreneurs understand that IP is an extremely valuable asset that needs to be properly protected.    

By Marcin Fijalkowski, Partner, and Michal Pekala, Associate, Baker & McKenzie

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

The Republic of Moldova, a former USSR country, became an independent state on August 27, 1991. Subsequently, the Republic of Moldova has become a member-state of the United Nations, a member of the Commonwealth of Independent States (“CIS”), and a full-fledged member of the international community. Currently, the Republic of Moldova promotes the EU integration vector in its external policy, and it initiated the EU Association Agreement on November 28, 2013.

Based on its international undertakings and for the purposes of better administration and application of the IP legislation, on September 13, 2004, the State Agency for Intellectual Rights Protection and the State Agency for Copyrights merged into one entity: The State Agency on Intellectual Property of the Republic of Moldova (“AGEPI”). AGEPI is vested with the right to control, register, supervise, and enforce compliance with the provisions of applicable IP legislation. In addition, AGEPI represents Moldova in its relations within the international treaties it is party to, as well as promoting and supervising the issuing of new IP legislation and any necessary changes to relevant IP laws.

Since AGEPI’s establishment, the following key IP legislation has been passed:

1. The Law on Protection of Industrial Designs no 161-XVI dated July 12, 2007: The framework piece of legislation that governs the procedure of creation, criteria of novelty, registration, and protection of industrial designs;

2. The Law on the Protection of Trademarks no 38-XVI dated February 29, 2008: Providing for the criteria of existence, novelty, and the moment of apparition of a right over a trademark, their registration, the period of protection, as well as rights and obligations of a trademark owner and third parties;

3. The Law on the Protection of Inventions no 50-XVI dated March 7, 2008: Providing the criteria an invention has to comply with to be protected, the procedure, terms and conditions of registration of an invention, as well as the limits of its protection; and

4. The Law on Copyright and Related Rights no 139, dated July 2, 2010 (the most recently approved law): Transposing the provisions of EU directives governing copyright protection.

The registration of an IP right may be done personally by the IP-right holder only if he/she/it is a resident of the Republic of Moldova. Applicants who are non-residents (i.e. foreign individuals or legal entities) may only register IP rights via authorized Moldovan IP agents.  The filing of registration applications is a standardized and transparent procedure (the applicant uses template forms approved and made available by AGEPI, both in Romanian and English languages). Filing may also be done electronically, using a digital signature. All decisions issued by AGEPI in such procedures are published in the Official Journal of AGEPI, which is also available electronically on AGEPI’s official webpage.

It is important to note that the number of requests for registration and, consequently, protection of IP rights has been fairly constant every year so far.  Thus, in 2012, a total of 6084 requests for registration of IP rights were filed with AGEPI, in 2011 there were a total of 6391 requests, in 2010 there were 6111 requests, and so on.  Moreover, almost two-thirds of these requests came from international IP-rights holders, meaning that international companies are very interested in seeking to register and protect their IP rights in the Republic of Moldova.    

By Luiza Gijga, Head of IT/IP and Roman Ivanov, Associate, Vernon|David

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

In the 21st century, significant resources are invested in developing and maintaining a high standard of products and services related to information technology. In the ever-changing IT sector, companies that are involved in developing new competitive software solutions seek new ways not only to maintain the quality of their products but also to boost their competitiveness. However, the on-going threat of copyright infringement through software piracy often impedes fast development and healthy competition, as revenues are lost and additional resources are spent in tackling with the issue.

Current Status of Software Piracy in Montenegro 

According to the most recent International Data Corporation study of worldwide software piracy rates, the software piracy rate in Montenegro is a high 79%. As a result, Montenegro faces a problem causing direct impact on its GDP, tax revenues, and overall compliance with EU IP legislation. However, this is not to say that no action has been taken towards raising awareness of the importance of using legal software and the impact of legal use on the country’s economy. Joint actions taken by global software manufacturers, independent organizations, and state authorities are regularly organized across the country to draw the attention of both the public and the private sectors to the benefits that could come with the decrease of software piracy. 

Most powerful incentives for tackling software piracy issues stem from the effects of the piracy rate and its impact on employment rates (in both IT and non-IT sectors), tax revenues, and the overall GDP. In other words, the higher the piracy rate, the lower the opportunities for new employment, IT generated taxes, and overall GDP contributions. Inversely, the lower the piracy rates, the more new jobs will be created in the IT industry or related sectors, IT-generated tax revenues will grow, and ultimately the state budget will grow with it.

Continuous actions are also oriented towards educating people that authored works of intellectual property such as computer software are not things that can be used freely, but remain protected property, which entails among other things a right to financial profit. 

IP Legislation and the Solutions It Provides for Fighting Software Piracy

In Montenegro, a set of IP-specific and other laws provide mechanisms for fighting software piracy. Therefore, the Law on Copyright and Related Rights provides for general protection of works of authorship including computer programs and software. The Law on the Enforcement of Intellectual Property Rights appoints an authority to review the circulation of copyrighted works,  including computer programs and software. The Montenegrin Penal Code addresses infringement of all intellectual property rights and provides for strict criminal penalties in cases of such infringement. Finally, the Law on Optical Disks prescribes mandatory conditions that need to be fulfilled in order to be able to reproduce optical discs for commercial purposes, and mandates the  surveillance of circulation of optical discs.

However, even though most of these laws are to a great extent harmonized with EU legislation, there is always room for improvement. Hence, when implementing provisions of the law that provide mechanisms for protecting IP rights over computer programs and software, practice has shown that legislators have yet to provide a complete set of solutions to resolve all problems 

Conclusion

According to studies performed in the past year, widespread circulation of pirated optical media and use of pirated software products remains prevalent. Even though enforcement is slowly improving as relevant state bodies undergo trainings to provide them with the necessary knowledge of how to recognize and resolve these problems, the judiciary system remains relatively slow in processing IP cases and consequently in awarding the fines necessary to deter further IP infringement.

By Tamara Bubalo, Associate, Karanovic/Nikolic

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

Temporary injunctions in industrial property disputes are regulated in Slovene law by the Industrial Property Act (ZIL-1). Industrial property disputes include disputes relating to infringement and validity of patents, marks, and designs, but not copyright disputes, which are regulated separately. For issues that are not specially regulated in the sectoral law, general provisions on enforcement and securing of civil claims apply.

Conditions for Issuing

The owner of a right who requests a temporary injunction against an infringer must prove with a degree of probability (1) that he is the owner of the right, which also includes a proof on the validity of the right, and (2) that his right was infringed or that there is an actual risk of infringement.

Moreover, with a degree of probability the owner of a right must prove either (3a) a risk that enforcement of claims will be rendered impossible or rather difficult, or (3b) that damage difficult to repair will be incurred, or (3c) that the alleged infringer will not incur more severe unfavorable consequences due to the issuance of a temporary injunction than the consequences that the owner of a right would incur without the issuance, or (3d) that the alleged infringer will only incur insignificant damage if a temporary injunction is issued. Subsection (3a) is considered satisfied if claims are to be enforced outside the European Union.

Special Attention Should Be Drawn to Two Additional Statutory Conditions in Disputes Relating to Infringement of Patents. 

The owner of a patent must furnish a motion for issuance of a temporary injunction with a declaratory decision of the Slovenian Intellectual Property Office (SIPO), which proves that the patented invention has undergone a substantial examination (for instance a Slovene translation of an European Patent for the same invention). In fact, when granting a Slovenian patent, SIPO does not perform the substantive examination of novelty, inventive step, and industrial applicability of the invention.

Furthermore, the owner of a patent must file the motion within three months from the day he was informed of the alleged infringement. In practice this condition can raise difficulties, as the owner of a patent is required to act rapidly to avoid disputes as to when he is deemed to have been informed of the alleged infringement (for instance at the moment when a warning letter requiring further explanation was sent to the alleged infringer, or only after possible further explanation has been received, etc.). According to case law, the three-month term cannot start before a declaratory decision of SIPO is served on the owner of a patent.

The courts have lately often dealt with weighing unfavorable consequences for the owner of a right and the alleged infringer (subsection 3c above). In a recent decision the Higher Court of Ljubljana explained that the scope of business operations cannot be a relevant criterion in weighing unfavourable consequences (the owner of a mark was a multinational company, whereas the alleged infringer was a small restaurant). Yet in another decision it stated that it is not sufficient for the alleged infringer to refer to inability to subsequently prove the extent of damages; he should rather prove concrete circumstances, such as the higher scope of damage due to a higher turnover of a disputable medicine compared to the owner of a patent, or that the disputable medicine represents a decisive share in total business operations of the alleged infringer.

Claims

In his motion for issuance of a temporary injunction, the owner of a right may especially request that the court (1) prohibit the infringement and future infringements, and (2) order that the objects of infringement and/or the means that are exclusively or predominantly intended or used for infringement be seized, excluded from sales, and stored.

Also other claims by which the purpose of temporary injunction can be reached may be requested by the owner of a right. According to case law, however, a temporary injunction cannot compel the destruction of objects of infringement or infringement means, as the consequences of such a temporary injunction could not be remedied in case the claims are later rejected.

It is worth mentioning that a motion for issuance of a temporary injunction can include a claim for a fine when the alleged infringer fails to meet his obligations within a stipulated term, although the payment can only be requested for the benefit of the state budget and not for the benefit of the owner of a right.

Procedure for Issuing

As a rule, the District Court of Ljubljana – as the exclusive competent court — decides on issuing a temporary injunction only after it has served a motion for its issuance to the alleged infringer and the infringer has had an opportunity to react to it. If the owner of a right requests that a temporary injunction be issued without having previously notified the alleged infringer, he must further prove probable that any delay whatsoever in issuing a temporary injunction would result in damage difficult to repair.

In practice, one has to take into account that a procedure of issuing a temporary injunction at the District Court of Ljubljana can take several months, at least in more demanding cases. Once it is issued, the alleged infringer may file an objection with the same court, and if he fails, he may file an appeal with the Higher Court of Ljubljana. 

Although the law does not explicitly exclude any means of evidence, applicable case law emphasizes that appointment of an independent court expert will only be possible in exceptional circumstances. On the other hand, particularly in more technically demanding (mostly patent) disputes, judges (who are lawyers without any technical background) will often decide on the basis of expert opinions that can be submitted by the parties.

Conclusion

In the past years we have seen progress towards a more benevolent attitude of the courts towards the owners of rights (which is evident for instance from the above-mentioned viewpoints of the Higher Court of Ljubljana), yet temporary injunctions against alleged infringers are still not easily obtainable in Slovenia. The courts adhere to a relatively restrictive interpretation of statutory conditions referring especially to a key decision of the Constitutional Court of the Republic of Slovenia from 1998 which stipulated strict limitations for issuance of regulatory temporary injunctions.

By Luka Grasselli, Senior Associate, Odvetniki Selih & Partnerji

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

With its landmark Decision No. 4658/2012, the First Instance Court of Athens called on Greek telecommunication companies to impose technological measures in order to block access to certain IP addresses which contain unauthorized content. For the first time in Greece, Internet Service Providers (ISPs) were ordered by a court to intervene and take measures against unauthorized online copyright activities. Decision No. 4658/2012 constitutes a well-reasoned and important judicial precedent for similar cases of copyright infringement taking place through the Internet.

The local (Greek) Collective Management Organizations of the copyright holders and the holders of related rights, acting jointly, filed for injunctions before the One-Member First Instance Court of Athens against all Greek telecommunication companies, seeking to block access to the  websites by Internet users.

The Court ruled that converting a copyrighted work to digital form, uploading it, and making it available through a URL were clearly infringing activities which prejudiced the rights of the copyright holders. By simply accessing the sites, Internet users were able to download and view the particular copyrighted works. It was the Court’s view that the mere possibility that Internet users could download the works (regardless of whether they  actually viewed the unauthorized content or not) was sufficient to call for copyright protection.  

It was the first time a Greek court had implemented the legal provisions of Article 64 A of Copyright Law, which transposes Article 8 par. 3 of Directive 2001/29 into Greek Law, and provides that injunctions may be applied against intermediaries whose services are used by a third party for illegal activities. According to the ruling of the Court, ISPs clearly fall within the meaning of “intermediaries” since they provide the necessary means to third parties for committing copyright infringement and therefore an injunction may, in principle, be granted against them. 

The Court held that imposing restrictions to specific webpages does not contradict a constitutional right of freedom. It was particularly taken into account that the blocking of Internet access in the case before it was not general, but applied only to specific websites and infringing actions. Therefore, the imposition of technological measures against the ISPs was regarded as necessary to minimize the negative effect for the persons affected, and proportional, as the benefit would be greater than the damage caused.

The technical experts’ report provided by the applicants referred to two basic techniques of blocking access to the specific websites: (1) Internet-Protocol and/or domain-name-level access blocking; and (2) DNS-level access blocking. The use of these  techniques, in combination, was regarded by the Court as an appropriate and effective technical measure which is easily achievable and has no adverse effects on the functioning of the Internet in general and the quality of the services provided to Internet users

According to the Court’s decision, specific blocking measures imposed on ISPs, following the issuance of a judicial decision as required by Greek law, are not in principle disproportionate to nor incompatible with fundamental rights such as a person’s right to participate in the information society. 

The position of ISPs in the operation of the Internet in general is crucial since they secure and provide access for Internet users to the entire online environment. Whether such access should be restricted or not, and under which exact circumstances, is a matter that must be examined by the judicial authorities always in concreto. It is left to the courts to achieve, in each and every case, an appropriate balance between the fundamental rights of the opposing parties. However the Court of First Instance of Athens, with its decision, created a significant judicial precedent in favor of  copyright and related rights’ protection.

Greek copyright law provides a very severe and pro-copyright legal framework, according to which unauthorized copying, reproduction, and exploitation by any means or form, wholly or partially, of an original intellectual property work constitutes a civil and criminal offense, punishable with imprisonment of one to ten years and pecuniary penalty of EUR 3,000-60,000.

By Irini Daroussou, Partner, A.&K. Metaxopoulos and Partners Law Firm

By Tamara Bubalo, Associate, Karanovic/Nikolic

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

Many elements of a modern law practice would be completely foreign to practitioners from past eras. Fax machines have come and gone, as have pagers, typewriters, and other tools at one time considered first revolutionary, then indispensable. In that context, trying to predict which particular elements of a modern practice are truly permanent is fool-hardy. But it is difficult, to say the least, to imagine a successful law firm operating without a website anytime soon.

Law firms wanting to present themselves as sophisticated and confident players need to have an attractive site that identifies them as such to the world. Firms should be confident enough to identify the members of their team on their website, and aware enough of the importance of modern marketing principles to make articles and other forms of thought-leadership available. These sites should be simple and attractive, without sacrificing content and detail. Needless to say … some respond to this challenge better than others.

At CEE Legal Matters, we know something about putting together an attractive, popular, and  informative website. Thus, in a spirit of admiration and approval for a job well done, we’re going to review the websites of leading regional Corporate/M&A law firms (excluding those firms whose websites have a similar design to those of international firms they are affiliated with) to determine which, in our opinion, is the best in each of the 24 markets we cover, and which therefore qualifies as a CEE Legal Matters Top Site. For this first issue, we reviewed sites in Turkey and Ukraine.

First, each firm’s website will be checked for four “objective” elements that we believe every law firm that is successful, respected, and both fully confident in its business model and fully prepared to serve foreign and English-speaking clients should have: Professional and polished English, sufficient for an international clientele (4 points); Full identification of all lawyers in the firm, from junior associates up to partners (4 points); Contact details provided for all partners in the firm (5 points); Articles and other forms of thought-leadership (3 points). Second, the editors of CEE Legal Matters will evaluate each website and award between 0-5 points on the following: User friendliness; Content; Detail; “Je Ne Sai Quoi” (a catch-all category to capture unquantifiable over-all effect). Finally, all three scores will be combined into a grand total out of the maximum 56 points.

TopSite Award – Turkey

 

The best website of those reviewed in Turkey was that of Cakmak Attorneys at Law, which scored an impressive 51 points – including maxing out at 16 points on the objective criteria (a distinction shared in Turkey by only Kolcuoglu & Demirkan and ELIG). The Cakmak website remains simple and clear without sacrificing any necessary information, and has an impressively collection of articles and other forms of thought-leadership available for viewing. The firm also demonstrated its confidence both in the abilities and loyalty of its lawyers (itself a strong demonstration of the firm’s confidence in its brand) by providing contact details for the entire team, including associates. While containing few bells and whistles, the site is essentially flawless.

Partner Zeynep Cakmak said she was “delighted to learn” of the award, and she made a point of acknowledging the significant contribution of Jeremy Steel of Visual Communications Design, who did the actual designing. Cakmak explained that, with Steel, the firm had aimed “for a simple, user-friendly website which at the same time gives strong messages to the outside world about who we are and what we do as a law firm that has a long-standing and reputable history in Turkey.” She concluded, simply, that “I believe we have reached our goal.” We at CEE Legal Matters agree.

 

Second place in Turkey – and first place among the firms in Istanbul – was the website of Kolcuoglu & Demirkan, which received 48 points. K&D’s website also received the maximum possible number of “objective” points. It also combines simplicity of design and detailed contents (including substantial thought-leadership and contact details for its entire team) in an attractive and easy to use combination. Separate contact details were provided not only for all associates, but even for separate back office functions – one of the only websites we saw that provided this useful information.

Gunes Ergun, the new General Manager at Kolcuoglu & Demirkan, explained that the firm’s decision to identify its entire team on the website represents an acknowledgement of the contributions each and every member makes to the firm’s success, as, “they are the faces of our values and the owners of all our achievements.” And although Ergun conceded that the colors on the firm’s website “are quite sober,” she explained that “they also give a hint about the way we offer our services to our clients; we do our best to provide the most valuable legal advice to our clients while keeping our reasoning solid and transparent.”

The firm has plans to make the website even stronger soon. Ergun says that, “among our plans is to add an HR page, where applications can be submitted in a more standard form, making things easier for both applicants and our HR team.”

TopSite Award – Ukraine

 

The CEE Legal Matters review of the top-ranked M&A websites in Ukraine resulted in a solid victory for Vasil Kisil & Partners, with 50 points. 

The Vasil Kisil & Partners website serves as a superior example of how to direct viewers to information about specific practices and experts, as the site’s search function allows visitors to view lawyers either by practice area (with names, seniority, and contact details provided for each member of the group, from junior associates up to partner), or by role. Recent deals and accomplishments are broken down by sector and practice as well, and a large number of publications and newsletters are available on the website. 

Yuliia Chervonooka, VKP’s Public Relations Director, expressed appreciation at the recognition. She explained that the site was launched last year, and that the firm’s objective in creating it was to provide clients “with valuable content such as recent trends, legislative and regulatory changes that can affect their business as well as to make it as user-friendly as possible.” And she pointed out that, “high interest in the new web-site is demonstrated, in particular, by a 40% increase in a number of unique users visiting the English version (according to Google Analytics).”

 

Sayenko Kharenko’s website came in second of those reviewed in Ukraine with 47 points, and though it does not identify the firm’s associates – the only of the four websites featured in this issue to lack one of the “objective” criteria – the site was is extremely strong in all other ways.  Of particular mention are the site’s identification of experts both by practice area and by sector, its detailed summary of recent deals, and its unique “about us” option that presents information in colorful and compelling ways and invites visitors to participate in a survey. If Sayenko Kharenko’s website were to identify the firm’s associates – let alone include their contact details – it would be truly exceptional.

Iryna Khymchak, Head of Sayenko Kharenko’s Marketing and BD Department, commented that “we aimed to create a website that will actually engage a visitor, holding his/her attention and, ultimately, inspiring that person to contact the firm.” She stated that the firm “believes that a web-site is a powerful online communication tool, and we want to always talk back to our visitors, that is to make sure that our web-site is at all times new and relevant.”

Interview with Cigdem Dayan, the Chief Legal Counsel at ING Bank Turkey.

   

Cigdem Dayan

 CEELM: You started your career at Yapi ve Kredi. How did you get to ING?

CD: I started with Yapi ve Kredi in 1990, June, as a lawyer. And step by step I moved higher. And lastly I worked for Yapi Kredi as a Senior Vice President, and 2006, February, I transferred to Oyak Bank as an Executive Vice President. ING bought Oyak Bank shares, and one year later, the name was changed.

 CEELM: Why did you move to Oyak Bank?

CD: Koc Group bought Yapi Kredi and the structure was not clear. And the job that Oyak Bank offered me seemed a better opportunity for me.  

 CEELM: You never worked in a law firm. Some people think that working in law firms provides a basic level of training and exposure to a wide range of work, and that is useful for training and experience and development. Do you regret not having that experience, or was it not so important for you?

CD: I didn’t prefer it, because in 1990, Yapi Kredi was like a school. I learned lots of things at Yapi Kredi. I had the chance to see different cases, and it is a big bank, so …

 CEELM: Was it a big legal team?

CD: Yes. Working in a big bank gave me an opportunity to see interesting and different cases, and I gained a lot of experience.

 CEELM: So in some ways it was like a law firm – you got to learn a lot of different things?

CD: Yes. It was like a big law firm.

 CEELM: Does that mean that coming out of university you knew you wanted to work in banks?  That’s all you’ve done.  Did you know you wanted your career to be as a banking lawyer?

CD: When I went to university I thought I would stay in academia.  My professor wanted to work with me.  But I waited a long time for an open position.  Nearly one year I waited. At that point I thought, “maybe I’ll try to work outside,” and I applied to banks. Yapi Kredi called me, and I accepted their offer, and six months later a position opened at the university, and my professor called me – but I said “no, I like it here. I prefer to work with the bank.” [laughs].

 CEELM: So you didn’t think, “I’m going to be doing this for the next 20 years of my life”? You liked it, and …

CD: First I thought, “maybe five years will be enough for me.” [Laughs]. “Five years later I’ll move.”  But I couldn’t do it.

 CEELM: You’re still here.

CD: Yes, I couldn’t do it. Because I  do like it.

 CEELM: That’s my next question. How would you describe what you do?  I know you’re the Chief Legal Counsel.  But what do you do? What is your role in the bank, in your own mind?

CD: I and my colleagues are interested in all cases, all law suits all litigation against the bank or by the bank and legal follow-up, labor law, and consultancy, and all branches and the head office.  So we are interested in all of the bank’s legal issues. Of course sometimes we take a … oh, how can I explain … for instance, the Capital Markets Board is a very special area, and Competition Law is a very special area, and we have a consultant – an outside consultant to help with those matters.   

 CEELM: I want to ask a few questions about how you work with outside lawyers. How do you decide what work you keep inside the bank and what work you give to external counsel? When do you give work to external counsel?

CD: Two reasons. One is, if the subject is “specific” and requires a different expertise – for instance, as I mentioned before, matters involving the Capital Markets Board or Competition Law. These are very specialized areas, and Intellectual Property law is another one. We have external counsels to assist us on these subjects. Also for enforcement of non-performing loans, we work with outside law firms. Not counsel. Law firms. Not only in Istanbul. In different cities.

 CEELM: You have law firms in these cities you work with?

CD: Yes, local law firms. We prefer to work with local law firms.

 CEELM: Do you select the firms that you work with yourself?

CD: My colleagues – some of my colleagues – go to different cities in all over Turkey, to check the law offices we engage with, their office space, their equipment, how many people work with them.

 CEELM: These are some of your colleagues?

CD: Yes, I have an investigative team.

 CEELM: Really? That investigates the law firms?

CD: Yes. After we start to work with an external lawyer, for instance one year later, my colleagues make a visit plan.