We are delighted to be sponsoring the first US-China Entertainment Law Conference on 2 November 2016 at the Loyola Law School, LA, California. This event will bring together senior policymakers, academics, business executives and international practitioners from China and the U.S. to discuss cutting-edge legal issues in the US-China film, television, music and gaming industries.
Please click here to view the agenda and register.
Date: 2 November 2016
Location: Loyola Law School, 919 Albany Street, Los Angeles, California 90015, USA
Co-sponsor: Hogan Lovells
The Brands Team at Hogan Lovells is holding its annual Brands Seminar, on 17 November 2016 at Graphic Bar, Golden Square, in the heart of London’s Soho.
With some radical changes expected over the next few years as we determine what Brexit means, our IP team examines what opportunities this may bring you and its impact upon your brand protection strategy. We shall also examine contrasting approaches to protecting and enforcing your brands across the EU, the UK and the USA so that you can assess how best to take advantage of the coming changes.
Date: 17 November 2016
Venue: Graphic Bar 4 Golden Square London W1F 9HT Map
Time: 6.00pm Registration / 6.30pm Seminar / 8.00pm Cocktail reception
Click here to register for this seminar & Click here to download a calendar appointment
Louise Bailey – Events Advisor
Tom Goddard – Senior Marketing & Business Development Adviser
The freshly released report of the European Commission on EU customs enforcement of intellectual property rights in 2015 is testament to the high effectiveness of applications for customs action in the European Union as it shows a remarkable 15% rise in numbers of detained counterfeits compared to 2014 and a four year high.
Key Figures and Findings
The report makes public that almost 41 million counterfeit articles were detained in 2015 representing a domestic retail value of over EUR 642 million in total. Top product category was cigarettes (27 % of all detained articles), followed by “other goods”, a category which assembles products as diverse as batteries, glue or furniture (10 %) and product category toys (9 %).
The report also shows that more counterfeit articles were detained in the course of fewer detention proceedings compared to 2014 and that the decrease in procedures is due to procedures for destruction of small consignments falling almost 5% (counting for slightly above 22% of all detentions). This drop could not be matched by the parallel increase in detentions under the standard procedure involving higher quantities which was applied in almost 60 % of all detention cases in 2015. According to the EU Commission, the decrease in small consignment procedures is directly related to lesser detentions in postal traffic which itself resulted from right holders not wanting – or having renounced from application of – the small consignment procedure which was introduced in 2014 as a response to the growing importance of internet shopping. Continue Reading
Despite the UK’s Brexit vote in June, the preparations for the Unitary Patent and the Unified Patent Court had, until now, been continuing largely as planned.
The Preparatory Committee released an update on the preparations following the 18th meeting in Paris last week. The Committee used this meeting as an opportunity to discuss the road ahead given the uncertainty that has arisen due to Brexit. Two key decisions have now been taken as a direct reaction to the referendum vote.
1. Judicial Recruitment:
The original timetable for recruitment of UPC judges was to complete interviews and make appointments in early 2017. This timetable is now being revisited in the light of the result of the UK referendum, which the Committee acknowledge will “to some extent delay the entry into operation of the UPC”.
The Committee has announced that, whilst candidate selection will continue, the commencement of the next phase (which would include calling candidates for interview) will be re-scheduled. The Committee has not mentioned when the process is expected to continue and has said that further updates about the time plan will be provided in due course.
2. New coordinator of the IT Working Group:
Dario Pizzolante from Luxemburg was elected the new coordinator of the IT Working Group and presented a paper to the Committee on future work to finalise the IT system. The previous coordinator was Neil Feinson of the UK Intellectual Property Office.
First published October 19 on our UPC microsite. Keep up-to-date on the latest UPC developments by visiting the microsite here
Labour has challenged the Government to answer 170 in-depth questions on the detail of its Brexit plan.
The letter sent on 12 October to the ‘Brexit’ Secretary (the Conservative Party’s David Davis) from the Labour Party’s shadow Foreign Secretary (Emily Thornberry) and shadow ‘Brexit’ Secretary (Sir Keir Starmer), requests answers to 170 key questions on the government’s strategy regarding Brexit. Two of these questions in particular concerned the Unified Patent Court:
“110. Does the government intend to proceed with ratification of the EU agreement to establish a Unified Patent Court, in the agreement’s present form; and if not, what steps is the government taking to negotiate an alternative agreement to which it would be willing to sign up?
111. If the Unified Patent Court (UPC) goes ahead, will the Human Necessities seat of its Central Division continue to be located in London, as prescribed in Article 7(2) of the UPC agreement.”
The letter (here) was sent in advance of the October Opposition Day debate in the House of Commons and demands that Parliament should be given a vote on the government’s Brexit plan before Article 50 is triggered. It notes that, as the Prime Minister recently announced that the government will trigger the Article 50 process before 31 March 2017, that gives “a maximum of 170 days before Britain must begin negotiating both the terms of our exit from the European Union, and also our future relationship with our European partners on a host of issues, ranging from trade arrangements to law enforcement cooperation”.
First published October 19 on our UPC microsite. Keep up-to-date on the latest UPC developments by visiting the microsite here
On 14 October 2016 new official fees for trademark prosecution in Poland entered into force. New law simplifies the rules of calculating the fees and lowers some of them.
The most relevant of the changes are:
- Payment for the trademark filing is now calculated separately for each class of protection (previously it was calculated for three first classes jointly and separately for each additional class);
- Similarly, payment for trademark protection is now the same in each class of protection (previously it was higher for first three classes and lower for all additional classes of protection);
- The official fee for filing an opposition against a trademark application went down by 40% (from PLN 1000 to PLN 600).
Implementation of the new official fees is a consequence of a change of the Polish Industrial Property Law of 15 April 2016 which introduced a new regime for trademark registrations and oppositions, as outlined in our previous post.
For more information on trademark prosecution in Poland, please visit our LimeGreen IP knowhow platform here.
In 2012 and in the context of the well-known decision UsedSoft, the European Court of Justice (CJEU) decided on the sale of used software that has been purchased online via a download (3 July 2012, C‑128/11). There the CJEU clarified that the same rules and in particular the principle of exhaustion apply to software regardless of the way the software has been sold – material copy or digital online download. However, the latest decision by the CJEU demonstrates that there are still open questions when it comes to selling used software within the EU/EEC. On 12 October 2016, the court stated that it is an infringement of copyright to sell a copy of software if the copy is made by the user on a material medium other than the original material medium (a so called backup copy). This rule even applies in circumstances where the original material medium is damaged or unusable (12 October 2016, C‑166/15).
The sale of copyright protected works and their copies is addressed in the InfoSoc directive 2001/29 and includes the principle of exhaustion in Art. 4 (2). According to this principle, the right of distribution is “exhausted” in case the original work or a copy has been sold within the EU/EEC with the consent of the right owner. After the first sale the buyer can sell the (used) work without obtaining the right owner´s permission. In the special case of software, the principle of exhaustion is laid down in Art. 4 (2) of the software directive 2009/24. In the decision UsedSoft, the CJEU applied the principle also to software that has been purchased via download and not on a material medium like a CD.
The starting point for the current judgment is a criminal proceeding, which is rare for copyright infringements before the CJEU. The two defendants sold more than 3,000 backup copies of software protected by copyright on an online sales platform. According to the prosecution, the defendants hereby infringed the right of distribution. The question of infringement of that right has been submitted to the CJEU.
Judgment Continue Reading
Our Intellectual Property team in Asia is celebrating a run of success taking home the following 5 awards across our offices in China, Japan and Vietnam:
- International IP Firm of the Year (China Law & Practice Awards);
- Best in IP (Asialaw Asia-Pacific Dispute Resolution Award);
- Japan Trademark Firm of the Year (Asia IP) (Earlier this year we also won the Japan IP Firm of the Year from Managing Intellectual Property);
- Vietnam Copyright Firm of the Year (Asia IP); and
- International Copyright Firm of the Year (Asia IP).
The China awards are in part recognition for our ground breaking work in the field of copyright infringement for our client Blizzard Entertainment as well as market leading trademark work for TWG Tea in Hong Kong. It is also a reflection of the strength and depth of our practice. Asia-Pacific Dispute Resolution Award committee commented that “Hogan Lovells, the winner for IP firm of the year, was involved in a number of precedent setting cases in China, relating to preliminary injunctions in China. They successfully obtained the very first preliminary injunction ever to be issued by the Guangzhou Specialized IP Court.”
The Japan awards are a reflection of the leading work we do for a very long list of top tier brands which has enabled our Tokyo office’s trademark team to grow to become the largest trademark team of any international law firm in Japan our Tokyo office. We have over 100 Japanese clients in the trademark area, including 10 of Japan’s top 30 global brands (as ranked by Interbrand in Japan’s Best Global Brands & Japan’s Best Domestic Brands survey) and 8 of the top 10 listed Japanese companies by revenue.
Lloyd Parker, Head of Intellectual Property for the Asia Pacific Middle East Region commented: “We are extremely proud to receive five awards that recognise our strength and capabilities in the Asia region and how we are helping our clients reach their important commercial goals through precedent setting and market first services. Asia continues to be an increasingly important region for international businesses and we will continue to grow our teams in the region to meet and exceed the growing needs of our clients.”
About our IP team in Asia Continue Reading
The French National Cybersecurity Agency (ANSSI – Agence Nationale de la Sécurité des Systèmes d’Information) has recently launched an information campaign to heighten public awareness about the dangers of attacks on domain names and the importance of activating the Registry Lock on all sensitive domain names.
Domain name holders are generally aware that they can protect their domain names by locking them at the registrar level. However, for some generic Top Level Domain (gTLD) and country code Top Level Domain (ccTLD) domain name registrations it is also however possible to lock domain names at the Registry level. Wherever this option is available, it should be implemented for business critical and valuable domain names.
Locking domain names at the Registry level provides an additional layer of security against domain name hijacking, unauthorised domain name server (DNS) changes, domain name deletions and fraudulent transfers. Registry Lock services do this by adding additional authentication and manual validation by the Registry and managing registrar before any modification is made.
Awareness of DNS hijacking is growing following high profile cases, such as the 2013 Syrian Electronic Army attack where the DNS for several high profile domain names were re-delegated to alternative DNS, thus bringing down the respective websites. However, many domain name registrants are not aware of the options available to increase the protection on their domain names.
ANSSI is thus recommending that holders of valuable and sensitive .FR domain names protect their domain names by activating the Registry Lock. AFNIC, the French domain name Registry, has been offering this service (the “.FR lock”) since 2015. The Registry Lock service under .FR is only available via AFNIC accredited registrars who have signed up to offer this service.
Registry Lock services are also offered by other ccTLD Registries, including .CA (Canada), .CC (Cocos Keeling Islands), .CN (China), .EU (European Union), .PT (Portugal), .SE (Sweden), .SG (Singapore), .SI (Slovenia), .TV (Tuvalu) and .UK (United Kingdom). It is also available under gTLDs such as .COM, .BIZ, .NET and .NAME.
First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house.
Unlike the Uniform Domain Name Dispute Resolution Policy (UDRP), the CNNIC ccTLD Dispute Resolution Policy (CNDRP) – the dispute resolution policy governing the “.cn” domain in China – sets a time bar which stipulates that no complaints concerning a “.cn” (or “.中国”) registration of over 2 years will be accepted. This time bar has in the past been criticised for imposing “unreasonable time limits” that would prevent the fair and equitable enforcement of intellectual property rights.
The history of this 2-year time bar can be traced back to 2000 when CNNIC developed its very first set of domain name dispute resolution rules. It has been widely perceived as an absolute time bar which immunes all “.cn” registrations of more than 2 years old from domain name complaints under CNDRP. In those situations the complainant would often have to resort to litigation or negotiations in order to recover the domain name.
However, in a case before the Hong Kong International Arbitration Centre (case number: DCN-1500641), the sole panelist considered that the transfer of a “.cn” domain name can amount to a new registration and thus re-setting the 2-year time bar. The domain name in question was first registered in 2006. The Panel found in favour the Complainant and ordered that the domain name be transferred to the Complainant. Continue Reading