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LimeGreenIP News

Welcome to the WIPO overview 3.0

The World Intellectual Property Organization (WIPO) has recently updated its WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the previous edition of which (WIPO Overview 2.0) was published in 2011.

The WIPO Overview is a collection of Uniform Domain Name Dispute Resolution Policy (UDRP) jurisprudence summarising consensus panel views on a range of common and important substantive and procedural issues.  To this end, the overview is broken down into an accessible question and answer format, making it easier for domain name and trade mark lawyers and other professionals to find what they are looking for.

Since its inception, the WIPO Overview has provided important insights that allow filing parties to reasonably anticipate the result of their cases.

In order to reflect a range of developments, notably the arrival of new generic Top Level Domains (gTLDs) and the development of internationalised domain names (IDNs), the WIPO Overview 3.0 now includes express references to almost 1,000 representative decisions (formerly 380) made by over 265 (formerly 180) WIPO panellists and classified under 64 different issues (formerly 46).  With such a significant update, WIPO has been able to shed more light on each of three UDRP elements, particularly the second one regarding rights or legitimate interests in a domain name, and address, for the first time, some new procedural issues, such as the ICANN-created Uniform Rapid Suspension System (URS) for new gTLDs.  In terms of wording, the new edition appears to be more succinct and less academic to the extent that WIPO no longer makes a clear distinction between different panel views as it did in the previous version.

One of the major updates in the WIPO Overview 3.0 focuses on the relevance of a TLD in the assessment of the three UDRP elements.  While the practice of disregarding the TLD in determining identity or confusing similarity (first UDRP element) is applied irrespective of the particular TLD (including with regard to new gTLDs), the meaning of certain new TLDs (e.g. .CLOTHING, .COFFEE and .VODKA) may now be relevant to the assessment of the second (rights and legitimate interests in a domain name) and third (registration and use in bad faith) elements.  For example, the selection of the TLD .EDUCATION for the registration of the domain name <cordonbleu.education> led to a finding that the respondent obtained the domain name to take advantage of the complainant’s CORDON BLEU mark as education was known to be the complainant’s core business.  The respondent was therefore considered to be acting in bad faith. Continue Reading

Time to re-visit the 2-year time bar in a .CN complaint?

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 over 2 years old 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 the year 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 immunises all .CN registrations of more than two years old against domain name complaints under the CNDRP.  In such situations, the complainant would often have to resort to litigation or negotiations in order to recover the domain name.

We discussed this 2-year time bar in previous post where the sole panellist considered that the transfer of a .CN domain name can amount to a new registration, thus re-setting the 2-year time bar.

Question: why would it now be a good time to re-visit this 2-year time bar?

This is because, since 15 March 2017, the new General Civil Law Rules of People’s Republic of China has extended the general limitation period for civil actions from 2 years to 3 years.  The General Civil Law Rules is an important set of rules in China which sets out the overall framework of a future civil code which is expected to be in place around 2020.

When CNNIC first developed its domain name dispute resolution rules back in 2000, one of the rationales for adopting the 2-year time bar was to align with the 2-year limitation period for civil actions in China (which applied to, for instance, trade mark infringement civil cases).  Now with the introduction of a general 3-year time bar under the General Civil Law Rules of People’s Republic of China, should the .CN time bar be similarly extended?

Our question is purely speculative as we are not aware of any announcements or plans from CNNIC to re-visit this issue in the near future.  On the other hand, brand owners would probably still prefer a complete removal of this time-bar for .CN domain name complaints.  Getting one more year on the clock to file a complaint to recover a .CN domain name is, however, probably a welcome middle ground.


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  anchovynews@hoganlovells.com 

Higher Regional Court of Cologne: Customer review with care – they could be advertising

The Higher Regional Court of Cologne decided in its ruling of May 24, 2017 (OLG Köln 6 U 161/16) that the publication of customer reviews on a company website may be considered as advertising in the classical sense originating from the company itself.

The case

The claimant had requested that the defendant refrained from advertising that its product is “saving detergents” in the sense that it economizes detergent use, as the statement was not based on reliable scientific findings. The defendant signed a cease and desist declaration of that content.

While the defendant stopped the advertising, the company website still contained published reviews of its customers stating that the customers were indeed saving on detergent use by using the product.

The claimant considered the publication of the customer reviews to be a violation of the cease and desist declaration given by the defendant and sued the defendant for the payment of the agreed contractual penalty. In contrast to that, the defendant argued that the obligation to cease and desist was limited to its own advertising and did not include the publication of the reviews.

Findings of the court

The Higher Regional Court of Cologne decided that the customer reviews fall under the scope of the cease and desist declaration and their publication was therefore forbidden and led to an obligation to pay the contractual penalty, §§ 339; 133; 157 of the German Civil Code. Continue Reading

Far-reaching decision by the CJEU on copyright: The Pirate Bay can be blocked by ISPs

Swiftly following the CJEU decision in Filmspeler (see our blog post), in which the Court found that the selling of multimedia players with add-ons to illegal streaming websites amounted to copyright infringement, the CJEU has confirmed that an indexing site such as the infamous website, The Pirate Bay, can be liable and as a result, internet service providers (ISPs) can be ordered to block those websites (judgment of 14 June 2017, C‑610/15Stichting Brein v Ziggo and XS4ALL Internet).

Background

The focus of the legal proceedings is the website The Pirate Bay which is in fact not a party directly involved in the dispute. Rather, the Dutch organization Stichting Brein who is fighting against piracy applied for an injunction against two telecom companies in the Netherlands, Ziggo and XS4ALL. Stichting Brein demands that the two ISPs block access to The Pirate Bay website because it infringes copyright.

The Pirate Bay serves as a popular website that enables users to find and download – mainly illegal – content on peer-to-peer file sharing websites. Instead of storing the content on The Pirate Bay, the so-called BitTorrent Index allows the website operator to index the metadata on protected works that is available on peer-to-peer networks by third parties and to categorize the metadata for the users. Consequently, The Pirate Bay operates as a search engine.

Stichting Brein was arguing that The Pirate Bay itself infringes copyright. However the ISPs argued that it is not The Pirate Bay but the actual users that infringe copyright and that they therefore cannot block the website.

Continue Reading on our GMCWatch blog

ITC Section 337 – Quarterly Highlights

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?

1793-1863, Washington, DC, USA --- Porticoes of the U.S. Capitol at Dusk --- Image by © Royalty-Free/CorbisITC 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:

  • SCOTUS Narrows Opportunity For ITC Section 337 Jurisdiction Over Imported Biosimilars Based On 180-Day Notice Provision
  • SCOTUS Holds Patent Exhaustion Applies To Foreign Sales
  • SCOTUS Limits “Residence” In Patent Venue Statute, 28 U.S.C. §1400(b), To State Of Incorporation
  • ID Issues In Personal Transporter 1000 Investigation Followed By Petitions For Review To Commission
  • Commission Issues Tailored Exclusion Order In Automated Teller Machines 972 Investigation
  • Federal Circuit Clarifies Prosecution History Disclaimer Standard

Read more in our full ITC § 337 update here.

Digital Single Market: “DSM in 5 minutes” – Brochure

DSM 5min

In this brand-new publication, our pan-European DSM Taskforce helps you plan for the changes by providing an overview of the Commission’s Digital Single Market strategy; what the key legislative measures will bring about and when we can expect the changes.

To track the DSM as it develops we have identified six main topic areas covered by the initiatives:

  • Copyright and Audiovisual Media Services
  • E-Commerce and Tax
  • Digital Platforms
  • Telecoms and E-Standards
  • Privacy, Cybersecurity and the Cloud
  • Government and Procurement

Download “DSM in 5 minutes”


Since it was announced in May 2015, we have seen the Commission’s Digital Single Market Strategy as a development which affects business from multiple angles. This led us to form a task force of roughly 25 lawyers with different backgrounds and expertise. Moreover, in conjunction with our Brussels office, we held a client event in Washington D.C. for panelists to discuss whether the DSM in Europe forms a threat or an opportunity for U.S. companies. We have seen quite some progress as regards the various consultations and legislative initiatives and the first “DSM project” – the regulation on the portability of online content – was recently finalized and will come into force early next year.

DSMWatch.com

 

To learn more about the EU Digital Single Market (DSM), please visit our microsite dsmwatch.com. A recent feature in the microsite is the interactive timeline depicting the various stages the draft initiatives have gone through. 

 

Court of Milan rules on interim measure ordering the halt of the pricing and reimbursement procedure of a generic product

greenpillsBy order issued on June 18, 2017, in summary proceedings brought by Teva against Mylan and Synthon for the alleged infringement of EP 2 361 924 (covering a manufacturing process for the active ingredient glatiramer acetate), the Court of Milan revoked the interim measure granted inaudita altera parte (i.e. without the defendants have been previously heard), which initially ordered Synthon and Mylan to refrain from carrying out further regulatory steps intended to obtain the pricing and reimbursement of the defendants’ Copemyl.

 Findings of the Court

The Court of Milan held that, in principle, the patent owner may seek an immediate injunction against the generic manufacturer to the effect that no other regulatory activities are performed to the purpose of the pricing and reimbursement of a generic product. In the case at issue, the Court noted that the order was not addressed against the competent authority (AIFA) but was restricted to the defendants. Therefore the defendants’ objection of lack of jurisdiction of the civil court was dismissed.

The Court stated that

the ordinary protection contemplated by the law (the appeal before the competent administrative court against the marketing authorisation allegedly granted in breach of the law), this being a measure granted only ex post, may not effectively satisfy the need of protection of the patent owner (due to the immediate impact of the decision in terms of market alteration and of the prices that are associated to the grant of the marketing authorisation, which cannot be easily determined and compensated on a later stage)”.

Continue Reading

Asia IP Webinar Series: Protecting your identity in the cyberworld

AsiaIP_Cybersec

Operating in the online stratosphere can create additional risks for your business, and protecting your identity, and the identity of your customers, is of paramount importance. Join us on Wednesday, 5 July for the second instalment of our Asia IP webinar series to learn about the latest developments and emerging trends in cybersecurity and data protection regulation in Asia.  Whether you currently have operations in Asia or are planning to enter the market, this webinar will guide you through the potential risks to your online businesses and how to tackle them. Topics covered during this webinar will include:

  • The Big Picture – an overview of the data privacy landscape in Asia
  • Protecting your data in Japan – what’s new?
  • What’s in a name? – domain name enforcement and recovery in Asia
  • Shopping for real – tackling IP infringement on e-commerce platforms in China

Date: Wednesday, 5 July 2017

Time:
4:30-6:00pm HKT
5:30-7:00pm TOK
9:30-11:00am BST

Speakers:

Register today

We hope you will be able to join us. For more information, please contact Kelsey Lau


Upcoming topics in our webinar series:

  • Patents – Everything to know from 2016 and what to look out for in 2017
  • Anti-counterfeiting – Developing and implementing effective and efficient strategies
  • Trade Secrets – Have you heard ….
  • Trademark litigation – Winning by paying attention to the details

DSM Watch: EU online content services Portability Regulation will become law in its current form: Council adoption 8 June 2017

EUTabletDSM Watch has been tracking this, the first legislative proposal published by the Commission under the Digital Single Market strategy banner, since back in December 2015.  The Commission’s aim was to allow consumers who pay for online content services in their home country to access them when visiting another country within the EU.

In our 10 February 2017 blog we looked at the Commission’s approach to the tricky question of what being “temporarily” in another EU Member State would mean, and how that could be verified.  Since then, that and other knotty issues around the proposal have been hashed out between the Commission, the EU Parliament and the EU Council of Ministers (Council), with negotiations culminating a few days ago with the adoption by the Council of a draft proposed by the Parliament on 18 May.

Continue Reading on our Global Media & Communications Watch blog


To learn more about the EU Digital Single Market (DSM), please visit our microsite dsmwatch.com

US: Supreme Court takes up constitutionality of inter partes review

On June 12, 2017, the Supreme Court granted certiorari to decide the constitutionality of inter partes review, a proceeding before the Patent Trial and Appeals Board (PTAB) that allows third parties, typically alleged infringers, to challenge the validity of issued patents.  The question presented in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC is “[w]hether inter partes review, an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

Oil States’ petition contends that Supreme Court precedent historically treats issued patents as the patentee’s private property, which was adjudicated in common-law courts guaranteeing the right to a jury. In Oil States’ view, the Supreme Court’s decision in Granfinanciera, S. A. v. Nordberg, 492 U.S. 33 (1989) requires patent validity to be tried in Article III courts because actions to enforce statutory rights (such as patent infringement and validity) that are analogous to common-law causes of action are protected by the Seventh Amendment.  Oil States also argues that the “public rights” exception to Article III, which allows Congress to delegate adjudicatory authority over public rights to non-Article III courts, does not apply to private rights such as patents.  IPRs allowing patent challengers to sidestep a jury trial are, according to Oil States, an unlawful delegation of power to expropriate private property rights.  Continue Reading