IP Enforcement Focus is our series of written, video and audio posts which plug into your current European enforcement issues. These posts cover IP related court cases as well as relevant political and economic developments in this area.
Since January, we have published 13 summaries of key IP enforcement developments, including 8 v-logs. This round-up outlines each commentary with a link to the full post, giving you the chance to catch up on any news you missed.
We look forward to bringing you further updates on IP Enforcement.
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Posts by date (with keyword Tags) Continue Reading
Our IP group offers the 2017 version of this comparative guide which outlines the trademark application process in 111 countries around the world, broken down into regions, and covering areas such as Application, Examination, Opposition, Cancellation, and Renewal.
Click the link below to register for your free copy of the full guide.
This guide and other IP reports are accessible on our free platform LimeGreen IP Know-how under Resources
The China Ministry of Industry and Information Technology (MIIT) has recently awarded licenses to a number of legacy and new generic Top Level Domains (gTLDs) allowing them to be sold and operated within China. This is in line with a continuing trend towards greater openness to the domain name world on the part of China.
China opened up to greater engagement with the domain name market subsequent to MIIT’s revision last year of its 2004 “Chinese Measures for the Administration of Domain Names.” The rules implemented pursuant to this revision clarified that, in order to host a website in China, the associated domain name must be registered with a registrar in China and imposed fines of CNY 30,000 (approximately EUR 4,000) for violation of this rule. They did not, however, prohibit the ownership of domain names by Chinese nationals registered outside the country.
The new gTLD .XYZ was one of the first to be awarded a license by MIIT in December 2016 and Chinese registrants accounted for one third of all of its domain names even before its accreditation. Other Top Level Domains (TLDs) to have received licenses so far include .CN, .CHINA, .COMPANY, .WEBSITE and .WANG.
Most recently, MIIT awarded licenses to the legacy gTLDs .INFO, .PRO and .MOBI, as well as the new gTLDs .RED and .KIM.
Roland LaPlante, Senior Vice President of Afilias, which runs the .INFO, .PRO, .MOBI, .RED and .KIM TLDs was quoted as saying that “China’s domain name market is already the world’s second biggest, with over 40M registrations” and that “more consumer choice will help it grow faster“.
As well as aiming to give more choice to Chinese domain name owners, registrars are of course keen to tap into the vast Chinese domain name market. Afilias has stated that it believes making its five domain name extensions available to Chinese businesses and other Chinese domain name users will allow Chinese businesses to enhance their global online presence as well as helping them to “compete in today’s marketplace“.
It will be interesting to see whether MIIT will in the future award similar licenses to other Registries and for other TLDs.
First published on Anchovy News: Anchovy® is our 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. For more information please contact us at firstname.lastname@example.org
Please join us on May 12 for an interactive webinar led by representatives from Hogan Lovells’ extensive Telephone Consumer Protection Act practice, including IP partner Zenas Choi. Together, they will help your executive team assess:
– Major risk drivers and key factors for strategic decision making.
– Recent litigation and regulatory developments.
– The election impact.
– Issues on the horizon for the rest of this year.
They will also discuss evolving compliance strategies and additional Board actions and operational steps you can take to help protect your organization against class action lawsuits and regulatory enforcement actions.
Click here for full details and registration.
In part II of this IP Enforcement focus v-log (see part I), we talk about the topic of acquiescence in IP infringement cases using the example of the famous Hard Rock Cafe case in Germany.
This case has shown that in merchandise cases the principle of acquiescence is only of limited value.
Watch the v-log here
For more enforcement information, please subscribe to our IP Enforcement Focus series of written, video and audio posts which plug into your current enforcement issues. Click here to subscribe
The ITC Section 337 series provides updates on recent U.S. International Trade Commission (ITC) Section 337 investigations as well as other timely ITC developments that affect your business.
What’s ITC and how can it affect my business?
ITC Investigations under 19 U.S.C. § 1337 (“Section 337”) are initiated by companies who have made domestic investments to exploit their intellectual property and believe competing entities are importing products into the United States in violation of their patent, trademark, copyright, or trade secret intellectual property rights. The ITC, based in Washington D.C., has the authority to issue exclusion orders prohibiting those products from being imported into the U.S., and usually adjudicates complaints much more quickly than U.S. district courts. Due to the speed, rigor, and differing procedures and requirements inherent in ITC Section 337 litigation, parties that file and defend ITC cases will face critical strategic choices.
In this update we cover the following issues:
- The Trump Administration’s Potential Impact on ITC Section 337 Cases
- ALJ Determines That Licensee’s Activities Satisfy Domestic Industry Economic Prong Under Section 337
- ITC Decision in Textile Fabrics Demonstrates Section 337’s Potential Application to False Advertising Claims
- Commission Holds Oral Argument on Dismissal of Antitrust Claims in Section 337 Case
Read more in our full ITC § 337 update here
A new legislative approach of the German tax authorities, which had been leaked in December 2016 (see our earlier report), was passed on Thursday, 27 April 2017, as one of the very last laws of the current Bundestag prior to the elections in September this year.
The bill will have a significant impact on the tax deductibility of royalties owed to related persons being subject to a preferential back end tax regime for IP not being in compliance with the OECD BEPS Action Plan. The new rules should come into force with regard to royalties payable after 31 December 2017 (i.e., the Bundestag did not agree to the proposal of the Bundesrat to apply the rule retroactively as of 1 January 2016). It can be expected that the Bundesrat will nonetheless agree to the bill in its meeting on 2 June 2017. Continue Reading
There is no end in sight regarding CJEU decisions on the meaning of “communication to the public“. On 26 April 2017, the European Court of Justice (CJEU) ruled (C-527/15 – Filmspeler) that the sale of a multimedia player with pre-installed add-ons that contained links to illegal streaming websites constitutes a copyright infringement. At the same time, the court clarified that the exemption for acts of temporary reproduction under Article 5(1) of the InfoSoc Directive 2001/29 did not apply.
The case was referred to the CJEU by a Netherlands district court. It focuses on the question of whether the sale of the multimedia player named “filmspeler” infringes copyright or not. The player, sold by the defendant creates a connection between a TV screen and audio-visual data such as online videos using a user-friendly interface. Additionally, the defendant installed several add-ons that – after a simple click – retrieve content from streaming websites and play the content on the multimedia player. Some of the content provided by the websites had been uploaded without the right holders consent. The defendant used this feature to advertise the product and promised easy and free access to illegally uploaded works. Continue Reading
Earlier this month, Laura Whiting attended the 25th Anniversary celebrations of the Fordham IP Conference at the Fordham Law School and reported on five key discussions for The IPKat.
Please click on the links below to read the full posts on The IPKat.
The Hong Kong International Arbitration Center (“HKIAC”) has recently issued its final award in the trademark litigation saga surrounding “The Voice of China” – which we first discussed here. This case is high-profile and interesting, because it involves parallel arbitral and judicial procedures (including a rare preliminary injunction) about the ownership of the rights in the “The Voice of China” TV format.
In summary, the case involves Talpa (the Dutch global licensor of the format), Canxing (the former Chinese licensee of the format, who refused a license renewal because of a price hike), Zhejiang Satellite TV (Canxing’s broadcasting partner) and Tangde (the new Chinese licensee of the format). After Canxing’s negotiations with Talpa failed, Canxing and Zhejiang Satellite TV decided to broadcast their own, arguably similar, format, which was rebranded to “中国新歌声” (“New Singing of China”), after an injunction by the Beijing IP Court (for more details see here).
The latest development in this dispute is that the HKIAC has now ruled that the Dutch media company Talpa owns the IP rights in the format, including:
- The name rights, including “The Voice of China“, the equivalent Chinese characters “中国好声音” and its Chinese Pinyin version “Zhong Guo Hao Sheng Yin”;
- A number of Chinese trademarks registered/used by the broadcasting platform and its affiliate companies;
- The sound and video materials;
- The format’s social media accounts and app; and
- The domain name http://www.chvoice.com/.
In its award, the HKIAC rules that the format and the mark “The Voice of China” are exclusively licensed to Tangde, and that Canxing and Zhejiang Satellite TV do not have any rights in the format or trademark.
Has the dust settled? Continue Reading