Header graphic for print

LimeGreenIP News

DSM Watch: The European Copyright Reform – JURI Vote scheduled for 27 March 2018

We have reported a couple of times on the efforts by the European Union to modernize EU copyright law and make it fit for the digital age. Now, it is almost one and half years ago that the Commission presented its first draft for a copyright directive. Since its publication there has been a great debate about the direction of the reform. This is not surprising given the explosiveness and the substantial range of the topic. Copyright affects everyone – starting from the authors (artists, performers, photographers etc.), to publishers as well as production and media companies through to online platforms and search engines and last but not least the “normal” internet user. The EU’s aim to create a fair digital market place for copyright protected works can therefore be considered as highly challenging. A very important step towards the realisation of the goal is expected to be made soon: it’s estimated that the Committee on Legal Affairs (JURI) for the European Parliament will debate and vote on the Parliament’s final position on 27 March 2018.

Where We Come From

On 14 September 2016, the European Commission presented the long awaited initial draft for a new directive on copyright in the Digital Single Market (COM(2016)593). The draft was published in the context of the large scaled Strategy for a Digital Single Market (for more information gathered by our DSM Watch team, click here).

Since the publication, there have been many different voices, some welcoming and some opposing the Commission´s proposal. The initial draft covers provisions to introduce new copyright exceptions (e.g. for the limited use of works for text and data mining), rules on out-of-commerce works and the fair remuneration of authors and performers. The ‘big issue’ items, however, are the introduction of a neighbouring right for press publishers (Article 11) and new monitoring obligations for online service provider (Article 13). Furthermore, the participation of publishers in the revenue generated by collective rights management and a negotiation mechanism in the area of audiovisual media are discussed controversially.

Upcoming Vote by JURI & the Parliament Continue Reading

US: Hogan Lovells in Wonderland – Celebrate with us at NYIPLA “Patent Prom”

The NYIPLA’s 96th Annual Dinner in Honor of the Federal Judiciary will be held on Friday, March 23. This year, Hogan Lovells invites you to join us on a trip through the looking glass as we transform the Sutton South suite at the New York Hilton Midtown into our very own Wonderland for pre and post dinner receptions.

The evening will offer delicious hors d’oeuvres and hand-crafted cocktails in an ambiance inspired by Alice’s timeless adventures. Guests will enjoy a photo booth with whimsical props and professional pictures to take home, along with music from an amazing live band performing hits of today and yesterday.

Following dinner, guests are invited to return down the rabbit hole and join us for a madcap post-party with dessert, drinks, and dancing, as our live entertainment increases to a five-piece dance band.

We look forward to welcoming you for a fantastic evening in celebration of this grand tradition! Click here to RSVP by March 15.


Date: Friday, March 23, 2018

Venue: New York Hilton Midtown, Sutton South Suite, 2nd Floor, 1335 Avenue of the Americas, New York, New York 10019

Time:

Pre-dinner cocktail reception: 6:00 p.m. – 7:30 p.m.

Post-dinner dessert reception: 10:00 p.m. – Midnight

Attire: Black tie preferred


Please contact Ashley Dowden for more information

Europe – General Court: Bad faith’s link to likelihood of confusion

(Case analysis: T-687/16Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ v EUIPO / Joaquín Nadal Esteban)

Successfully proving bad faith in a cancellation action can be a challenge. An additional hurdle can arise if the mark allegedly applied for in bad faith covers dissimilar goods or services. The General Court (GC) confirmed that bad faith must be assessed, inter alia, in the light of likelihood of confusion of the signs at issue, which presupposes not only a similarity or identity between the signs but also a similarity between the goods and services in question. Consequently, failure to prove such similarity will entitle the corresponding examiner to reject a bad faith claim.

Background

The “Koton” case started back in 2011 when Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ (“Koton Retail”) filed an opposition against Mr. Nadal Esteban’s application for the “Stylo & Koton” logo shown below. The application sought protection for, among others, business management and transport services in classes 35 and 39, respectively. The opposition was based on the earlier marks shown below and partially upheld for the services in class 35. However, the EUIPO refused the opposition in all instances in relation to the services applied for in class 39 due to the lack of similarity between the goods and services.

Not satisfied with the partial refusal, Koton Retail filed an invalidity action against the mark claiming bad faith under Article 59(1)(b) EUTMR. Koton Retail supports its claim that the applicant acted in bad faith by stating that the applicant clearly knew about the earlier “KOTON” mark as a result of a) the business relationship between them in 2004 and b) the opposition filed by the latter against Koton Retail’s international registration in Spain

The EUIPO rejected the invalidity action and Koton Retail’s subsequent appeal, leading them to bring the case before the GC. Koton Retail claimed, in particular, that the Board of Appeal erred in finding that similarity between the goods or services was a necessary condition for a successful application of an invalidity action based on bad faith. Allegedly, this condition was contrary to case-law which established that bad faith must be the subject of an overall assessment of all the relevant factors of the case, and not only likelihood of confusion.

The General Court’s decision Continue Reading

EU IP rights enforcement: yet another jurisdiction conundrum heading to Luxembourg

The CJEU has just been posed the following questions on the interpretation of Article 97(5) of the EU Trade Mark Regulation ((EC) No. 207/2009) by the English Court of Appeal. The questions concern jurisdiction to hear EU trade mark infringement claims in a cross-border online advertisement and sale case and the answers will have consequences not only for EU trade mark but also for EU design litigation across Europe. That’s because the jurisdiction provision in issue is in identical terms in the Community Designs Regulation (Article 82(5), (EC) No.6/2002).

The questions

In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B:

i) does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory?

ii) if not, which other criteria are to be taken into account by that EU trade mark court in determining whether it has jurisdiction to hear that claim?

iii)         in so far as the answer to (ii) requires that EU trade mark court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?

Case background

At the end of 2016, the judge in charge of the UK’s Intellectual Property Enterprise Court (IPEC), Judge Hacon, handed down his ruling on jurisdictional challenge in a case concerning the enforcement of registered UK national and EU trade marks: AMS Neve Ltd & Ors v Heritage Audio S.L. & Ors [2016] EWHC 2563 (IPEC). This decision has baffled UK IP lawyers for the past year.  As we explain below, it has also somewhat baffled the English Court of Appeal which handed down its judgment on 1 February 2018 along with the above questions for the CJEU: [2018] EWCA Civ 86.

The Claimant/Appellant, AMS Neve Limited (“AMS”), has manufactured and sold a “1073”-branded microphone preamplifier in the UK since the 1970s. By all accounts, this piece of equipment is extremely well-known in the recording industry and is at the very top end of its market, retailing for $4,749. AMS is the proprietor of three trade marks: one EU trade mark for the word “1073”, and to UK trade marks for logos incorporating a stylised sine wave, all registered for goods associated with sound recording and processing in class 9.

The Defendant/Respondent, Heritage Audio S.L. (“Heritage”), is a Spanish company. Fairly recently it started producing an identical “1073” product and offered it for sale on its website. AMS issued proceedings in the UK for infringement of all three of the above trade marks and for passing off, on the basis that Heritage’s offers for sale and sales of infringing products have occurred, among other places, in the UK.

Heritage applied for a declaration that the English courts did not have jurisdiction to try the claim. In his decision, Judge Hacon accepted that Heritage’s English-language website sold to UK customers: any EU customers could place orders and Heritage would ship to them, and the website indicated that their products could be purchased from a UK distributor. Continue Reading

LimeGreen Live: ITC Section 337 Investigations Webinar – 1 March

Join us for the first webinar in the LimeGreen Live series which will focus on the International Trade Commission (ITC) Section 337 Investigations.

The webinar will include a panel discussion with former ITC Administrative Law Judge, Theodore Essex, Head of Hogan Lovells IP, Media & Technology Americas Practice, Celine Crowson, and former ITC Trial Lawyers Association President, Tony Pezzano. The panel will provide background on the ITC Section 337 forum and discuss trends in ITC Section 337 investigations including:

  • Expected trends at the ITC over the next two years
  • The future of parties bringing SEP cases at the ITC
  • How easy is it for NPEs to use the ITC
  • Expected trends in life sciences related cases at the ITC
  • What do complainants, particularly first time complainants, to ITC cases need to consider
  • What do respondents, particularly first time respondents, to ITC cases need to consider
  • The interplay between parallel ITC, District Court and PTAB proceedings
  • The ITC public interest factors vs. district court eBay factors in obtaining injunctive relief
  • The 100 day early decision program at the ITC
  • What are the ITC settlement and mediation procedures

CLE Credit will be offered. Register today and download a calendar reminder


Date: 1 March 2018

Time: 12:00-13:00 ET / 09:00-10:00 West Coast / 17:00-18:00 UK/ 18:00-19:00 Western Europe


LimeGreen Live – Our LimeGreen Live series of webinars provide further insight into some of the topics covered in our Global Intellectual Property Outlook 2018. Please register your interest in further LimeGreen Live webinars here.

If you would like to sign up for the ITC newsletter, please click here.

WIPO – No fan site for tribute band

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel ordered the transfer of a domain name that exactly matched the name of a famous pop group and belonged to a tribute band.

The decision highlights the fact that genuine fan sites conferring a legitimate interest on the holder of a domain name that is identical or confusingly similar to a complainant’s trade mark are quite rare, especially when the domain name at issue is identical or very similar to the trade mark, thus creating an implied sense of affiliation. Whilst previous panels have found that a limited degree of incidental commercial activity may be permissible for a fan site in certain circumstances (for example to offset registration or hosting costs), where such commercial activity is more than incidental (for example use to promote a tribute band, as in this case) then respondents are generally unable to rely on the “fan site” defence.

The Complainant was Brother Records, Inc., of Beverly Hills, California, a recording company that owned the intellectual property rights relating to the pop group known as The Beach Boys.  The Beach Boys were formed in 1961 and had sold an estimated 100 to 350 million records worldwide.  The Complainant owned a number of registered trade marks in THE BEACH BOYS, the earliest of which was registered in 1978.

The Respondent was David J. Roberts of Good Vibrations, a tribute band based in the United Kingdom.

The disputed domain name was <beachboys.org> (the “Domain Name”), which was registered on 14 May 2002.  It was pointing to a website promoting the Respondent’s services.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):

(i) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Continue Reading

German Supreme Court remains claimant-friendly on cease and desist orders

BGH, October 10, 2017 – I ZB 96/16, published on February 6, 2018

Another milestone for cease and desist orders has been reached in Germany. The German Federal Supreme Court has clarified in a number of decisions that defendants in cease and desist orders not only have to cease the infringing use but also have to recall all products delivered to retailers. In a recent ruling issued on October 10, 2017 (published February 6), the Supreme Court was less restrictive clarifying that in preliminary injunction proceedings the defendant generally does not have to recall but only to notify its customers that the infringing products may no longer be distributed. In practice, however, such obligation to notify will have the same effect as a recall.

Background

This matter in dispute has been highly controversial amongst the Higher Regional Courts in Germany for many years and was answered partially during the last two years by the German Federal Supreme Court in a surprisingly claimant-friendly fashion.The Supreme Court clarified in three cases that cease and desist orders in principle comprise the obligation to recall products from the retail market (see our earlier blog post covering this ruling)

Ruling

According to this new judgment, the special characteristics of a preliminary injunction proceeding, especially its provisional character and the limited defence opportunities for the defendant, make a restrictive interpretation of the cease and desist orders necessary.

For this reason, in principle the defendant would not be obliged to recall the infringing products from the retail market when being served with a preliminary injunction but would, however, still be obliged to inform customers that the sale of the products has to be halted preliminarily.

In practice, such obligation to notify will most likely lead to the same effect as a recall. The defendant has to contact its customers and actively inform them of the prohibition to distribute the products for the time being. This may in some cases lead to customers cancelling the purchase orders, especially if food products are concerned which have a short-term expiry date. If the defendant refrains from notifying his customers, he risks a penalty order by the court. He may still argue that a notification of his customers will adversely affect his commercial activities and customer relations and that the interest of the claimant in these measures does not exceed this risk. However the defendant would run the risk of a court not being convinced to refrain from ordering a penalty if the defendant has not contacted his customers.

Take away points

With the present judgment the German Supreme Court continued its claimant-friendly, wide interpretation of cease and desist orders.

The troubling fact remains that, at least in a regular court proceedings, every cease and desist order comprises the obligation to recall the infringing products from the retail market.

Although the recall-obligation may now be slightly weakened in preliminary injunction proceedings the consequences for the defendant remain severe and the claimants position strong. Because even a “mere” notification to the customers to provisionally stop distributing the products due to a cease and desist order remains an extremely burdening obligation and will in many cases have severe detrimental effects to its image and customer relationships.


IP Enforcement Focus is a series of written, video and audio posts which plug into your current enforcement issues. Click here to subscribe to IP Enforcement

Client Choice Awards 2018: Our IP partners also join the podium

We are pleased to announce that Imogen Fowler, Natalia Gulyaeva, Ruud van der Velden, Fred Ch’en and Marco Berliri  (TMT) were selected as recipients of Client Choice Awards for 2018.

Client Choice recognizes those law firms and partners around the world that stand apart for the excellent client care they provide and the quality of their service. The criteria for this recognition focuses on an ability to add real value to clients’ business above and beyond the other players in the marketwww.clientchoice.com


Imogen Fowler received the Intellectual Property – Trademarks award for Spain. Imogen works with brand owners to proactively protect and enforce their trademarks and designs across Europe and globally, from brand inception and strategy through to searching, filing, enforcement, anti-counterfeiting and commercialization. Based in Alicante, Spain, the home of the European Union Intellectual Property Office, Imogen advises clients in multiple European languages and has extensive experience in successfully navigating clients through the differences in intellectual property laws across the Europe region.

 

Natalia Gulyaeva received the Intellectual Property – Patents award for Russia. Natalia heads the firm’s IP, Media and Technology Practice Group, and the Life Sciences Practice Group for Russia/Commonwealth of Independent States (CIS). Natalia has a wealth of experience working with clients in the high tech, pharmaceuticals, and biotechnology fields. Her diverse practice encompasses portfolio management, dispute resolution, and transactional work. Natalia is praised by peers and clients for “her business sense and clear management style,” is defined as “creative, flexible, and able to guide clients through the specifics of the Russian market,” and a “tough and focused attorney”.

Ruud van der Velden received the Intellectual Property – Designs & Trade Secrets award for the Netherlands. Ruud represents companies in patent and trade secret litigation in various technological fields, with a particular focus on life sciences and high tech industries. He combines his knowledge of patent law with an understanding of the market and regulatory issues. He has specific expertise in obtaining evidence. In one particular case, he was able to obtain access to evidence seized in the Netherlands relating to patent infringements abroad even though no patent was in force in the Netherlands.

 

Fred Ch’en received of the Intellectual Property – Patents award for Japan. Frederick is a dual qualified solicitor (England & Wales) and U.S. attorney (California), as well as a U.S. patent attorney and U.K. chartered biologist, whose practice is focused on both contentious and non-contentious patent matters. Frederick is a registered foreign attorney in Japan and specializes in assisting international businesses operating in Japan, and Japanese businesses with IP disputes or transactions around the world. He has an undergraduate degree in biochemistry and a doctorate in Medical Sciences (cardiovascular physiology).

Marco Berliri received of the ‘IT & Internet’ award for Italy – an accolade he has received every year since 2011. Marco has worked in the IT and internet fields for over 15 years and is one of the pioneers in the legal arena on Internet-related issues in Italy. He has significant experience in information technology and advises clients on a range of issues, including: data protection, e-commerce, regulatory and ISP’s liability.

 

 

Full cross-practice Hogan Lovells listing of Client Choice Awards 2018: Continue Reading

Total Brand Care Q&A – Product labeling and packaging in Europe

Hogan Lovells Total Brand Care is our firmwide holistic approach to creating, commercializing and protecting our clients’ most valuable asset – their brands. Creative product labeling and packaging can help promote and add value to a brand but if pushed too far over the legal line then there may be resulting claims, regulatory investigations and recalls which in turn will damage a brand’s reputation and value, so it is important for Total Brand Care to review and authorise labeling and packaging in a careful but practical manner.

Thomas Salomon, partner in our Hamburg office, discusses how labeling and packaging define a brand, and how legal requirements guide what is written on a label and the way a package is designed. From bright and glossy, to refined and elegant, product labeling and packaging convey information, messaging, and claims about a brand. At the same time the labeling and packaging must also include mandatory information, guided by local, national, and regional regulations.

As more companies take their products global, they need to assess the legal requirements for each market to avoid the possibility of litigation, and of misleading customers and losing their trust.

Read the full Q&A

Geoblocking – EU Parliament approves new regulation

The regulation on measures against unjustified geoblocking is close to become binding law. After the European institutions had reached a compromise on some last open issues in last November, the European Parliament approved the revised draft regulation in its plenary session on Tuesday. The bill sailed through with 557 to 89 votes and 33 abstentions (press release). This marks a milestone in the endeavour to bring to an end willful obstacles within the Digital Single Market.

The legislative initiative goes back to a draft the European Commission, officially presented on 25 May 2016 (COM (2016) 289). It centres on the reasoned perception that the Single Market aimed at by the European Union for so long, and which is set out as one of the Union’s core goals in Article 26 TFEU, actually does not exist on the Internet (which as such stands for a borderless and global concept). This enables “geoblocking“, i.e. the differentiation by way of origin of the Internet user, to be commonplace. As a result, users are arbitrarily denied access to certain websites because of their IP address, or simply confronted with different terms and conditions than EU citizens from other Member States. For example, a car hire in Heathrow can be more expensive when booking the vehicle out of France or Germany than when accessing the site with an Italian, Spanish or English IP address. We will put this type of scenario behind us soon when the new regulation is enacted.

Banning “unjustified” geoblocking Continue Reading