Renowned IP lawyers at the Annual INTA Meeting gathered in the Westin Hotel mid-morning on Tuesday 21 May for the Hogan Lovells Women’s Tea. IMPT partner Imogen Fowler was the sponsor of this event. The Hogan Lovells Women’s Tea is a networking event that brings together women from all over the world – from India to Latvia – to connect in a more convivial setting at the biggest trademark event of the year.
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 intellectual property laws across the Europe region. To learn more about Imogen’s practice, please visit here.
We are delighted to announce that Arlene Chow, Zhen (Katie) Feng, Imogen Fowler, Natalia Gulyaeva and Julia Anne Matheson have been included in Managing Intellectual Property’s Top 250 Women in IP list for 2019/20.
This special recognition recognizes female practitioners in private practice who have performed exceptionally for their clients and firms in the past year.
This follows the announcement that 44 Hogan Lovells lawyers were named ‘Patent Stars’ and ‘Trademark Stars’ in the 2019 edition of IP Stars, as well as being named Global IP Firm of the Year for the second consecutive year at the Managing Intellectual Property North America awards!
For the first time, the Court of Appeal of The Hague has given guidance on the interpretation of the CJEU decision in Huawei v ZTE and the standards for assessing FRAND defences under Dutch law. In its decision in Philips v Asus of 7 May 2019, the Court of Appeal of The Hague considered that the steps described in Huawei should not be considered as strict requirements but rather as guidelines. The Court of Appeal granted an injunction against Asus because it held that Asus had employed delaying tactics and had not acted as a ‘willing licensee’.
Philips appealed an earlier judgment of the District Court of The Hague regarding Philips’ patent EP 1 623 511 to a “Communication System”, which Philips alleged was standard essential but which patent was revoked by the District Court. The Court of Appeal overturned the decision and held that the patent was valid and essential to the UMTS/LTE standard. It also held that Philips did not abuse a dominant position in the sense of Article 102 TFEU.
The Court of Appeal first of all considered that Philips was under no obligation to disclose its patent application as an SEP prior to the finalization of the standard. The ETSI IPR Policy and ETSI Guide mention this should happen “as soon as feasible” and “in a timely fashion”, however according to the Court of Appeal a reasonable interpretation is that this should be done shortly after the standard is finalized and it has become clear what technology is included. The ETSI standards are not designed to be open standards free of IP rights, but designed to achieve technically optimal solutions.
Hogan Lovells’ Standard Essential Patent (SEP) Update reports on recent news and case decisions from jurisdictions including China, France, Germany, Italy, Japan, the Netherlands, Spain, the United Kingdom and the United States. The May 2019 update can be accessed in the following languages:
• English language available here
• Japanese language available soon
The May 2019 update covers these developments across the globe:
Global News & Notes
- Patent pool Avanci reported on 13 April 2019 that it has entered into a 2G, 3G, and 4G SEP license agreement with car manufacturers Audi AG and Porsche AG.
- On 17 April 2019, market intelligence firm IPlytics released a landscape analysis report on 5G SEPs in the automotive industry.
- The Supreme People’s Court (SPC) has granted InterDigital’s petition for retrial concerning the Guangdong High Court’s 2013 decision on FRAND rates to be paid by Huawei.
- SEP pool operator Avanci announced on its website that China Mobile has agreed to license its entire global portfolio of 2G, 3G, and 4G SEPs via Avanci’s “licensing platform.”
- On 16 April 2019, the Court of Appeal of Paris in Conversant Wireless Licensing SARL v. LG Electronics Inc. and LG Electronics France ruled that the patents asserted by Conversant were non-essential, rather than setting a worldwide FRAND license rate.
- On 22 March 2019, Higher Regional Court of Dusseldorf—one of the two most important appeals courts for patent cases in Germany—announced its second-most important FRAND judgment in case I-2 U 31/16, after the Sisvel v. Haier decision of 30 March 2017 (I-15 U 65/15).
The Netherlands Updates
- For the first time, the Court of Appeal of The Hague has given guidance on the interpretation of the CJEU decision in Huawei v. ZTE and the standards for assessing FRAND defenses under Dutch law.
United Kingdom Updates
- On 11 March 2019, in TQ Delta, LLC v ZyXEL Communications UK Limited & Ors  EWHC 745 (Pat), the Patents Court found TQ Delta’s EP268 patent (which expires on 25 June 2019) to be valid, essential, and infringed by ZyXEL Communications UK Ltd. At a further hearing on 18 March 2019, the Patents Court determined the form of order following its judgment (the “Form of Order Hearing”).
- On 11 April 2019, in Unwired Planet v. Huawei  Ewca Civ 2344 & Huawei v. Conversant  Ewca Civ 38, Huawei was given permission to appeal the UK Courts’ jurisdiction to determine global FRAND terms to the UK Supreme Court.
United States Updates
- On 18 March 2019, Judge Rodney Gilstrap of the Eastern District of Texas ruled in a case before him that insufficient evidence had been presented for the court to determine whether a non-practicing entity (NPE) had satisfied its FRAND obligations in licensing its SEP patents to a cellular phone manufacturer.
- On 11 April 2019, Judge Cathy Ann Bencivengo of the Southern District of California granted-in-part and denied-in-part a motion to dismiss filed by SEP-holder InterDigital, Inc. against claims brought by Swiss technology company u-blox AG.
- On 24 April 2019, Judge Joseph Bataillon of the District of Delaware, ruling on post-trial motions, ordered that SEP-holder Godo Kaisha IP Bridge 1 was entitled to a royalty as to LTE products sold by a cellphone manufacturer, including LTE products of the manufacturer that had not been specifically adjudicated.
For more information, please click on the link with the detailed newsletter (English version), or contact partners Paul Brown, Frederick Ch’en, Zhen (Katie) Feng, Joe Raffetto, Stanislas Roux-Vaillard, Dr. Benjamin Schröer and Ruud van der Velden. Our full series of all of our Standard Essential Patent Updates (including past updates) can be accessed here.
The use of figurative signs and words that evoke a geographical area which is associated with a protected designation of origin may constitute an unlawful evocation of the latter. This was the CJEU’s conclusion in its judgment of 2 May 2019 concerning a legal dispute about the protected designation of origin for Manchego cheese (C-614/17).
The Plaintiff is the Foundation responsible for managing the Protected Designation of Origin Queso Manchego (Foundation), whose purpose is primarily to manage and protect this designation of origin. The Defendant is Industrial Quesera Cuquerella SL (IQC), which, for marketing purposes, uses labels on three of its cheese products that show an illustration of a rider resembling the typical depictions of Don Quixote de la Mancha, a bony horse and landscapes with windmills and sheep, as well as the words “Quesos Rocinante”. This is a reference to the novel “Don Quixote de la Mancha” by Miguel de Cervantes, with “Rocinante” being the name of the horse ridden by Don Quixote.
The Foundation therefore brought an action seeking a declaration that the labels used to market the three cheeses not covered by the protected declaration of origin “queso manchego” and the use of the aforementioned words give rise to an infringement of the protected designation of Manchego cheese. In the Foundation’s opinion, the illustrations and words constituted an unlawful evocation within the meaning of Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.
The Spanish courts of first and second instance took the view that the labels in question evoked the region of La Mancha, but not necessarily the cheese covered by the protected designation of origin. The Supreme Court of Spain, which heard the case, ultimately referred the matter to the CJEU for clarification of the legal questions raised. Continue Reading
The United States Patent and Trademark Office (“USPTO”) has recently reiterated its commitment to stemming the tide of inaccurate and fraudulent trademark applications originating primarily from China. On May 9th, the Director of the USPTO, Andrei Iancu, testified before the U.S. House Subcommittee on Courts, Intellectual Property, and the Internet, and fraudulent foreign trademark applications took center stage. Specifically, Director Iancu acknowledged that the number of fraudulent applications is “an increasing problem” noting that the USPTO has done “a number of things and can do more” to stem the tide of fraudulent applications.
What steps is the USPTO taking to identify and prevent fraudulent applications?
Director Iancu in his testimony and statement to the Subcommittee identified the following:
- Piloting software capable of detecting altered photographs submitted as specimens of use;
- Increasing the number of post-registration maintenance filing audits; and
- Providing training to trademark examiners to identify and more closely scrutinize suspicious specimens.
Additionally, Director Iancu’s statement highlighted the importance of the proposed rule published in February requiring U.S. counsel to represent foreign-domiciled trademark applicants, noting that “the rule would enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory [trademark] requirements.”
While the USPTO has not yet provided details regarding the steps being taken to detect and prevent fraudulent applications, we are monitoring the USPTO’s efforts and will provide more details as they become available.
Data forms the cornerstone of the current economy. Last year, the GDPR and the EU Trade Secrets Directive created the legal framework for the protection of the most important data in a company: personal data and trade secrets.
On 23 May 2019, Hogan Lovells’ Amsterdam office will host this seminar in Dutch entitled ‘Bescherm je data!’ (‘Protect Your Data!’). Joke Bodewits and Ruud van der Velden will talk about the legislation and the opportunities it provides to companies. The focus will be on the “lessons learned” with respect to privacy, cybersecurity and trade secrets. Among the topics to be discussed is the overlap between the protection regimes and the importance to consider these in combination in order to fully utilize the possibilities for data protection.
This seminar is of interest to in-house counsels, in-house patent attorneys, privacy officers, CISO’s and IT managers.
For registration or further information, please contact Sandra Buitendam
We are delighted to announce that in the Legalcommunity IP&TMT Awards in Milan last night, we were awarded Best Law Firm of the Year, for the second time.
The Legalcommunity awards recognize excellence in the legal market in the field of intellectual property protection, telecommunications and media, and our widely regarded as one of the most important Italian award in the sector.
Please join our Hogan Lovells IP team this year at INTA Annual Meeting in Boston for an interactive and engaging breakfast seminar on the evolving IP landscape in China. As China continues to top the list of largest trademark filing countries, brand owners are facing increasing challenges in gaining and maintaining a foothold in a heavily crowded trademark pool. Trademark hijacking remains prevalent, and trademark applications regularly clash. Use of registered trademarks is also becoming more scrutinized, as some courts start to require use to enforce monetary damages and infringement decisions… it can take more than mere registration for a likelihood of confusion to arise.
During this seminar, our INTA Greater China team will take you through the following key issues, best practices, developments and more:
- Hit the road Jack: Developing a practical and multi-layered strategy to curb trademark hijacking
- Coexistence or no existence: Benefits and limitations of coexistence agreements in trademark registration
- Use it or lose it: What constitutes trademark use and how to maintain trademark use to support enforcement actions
We look forward to seeing you in Boston! Please contact Carrie Ballew for more information.
Date: Sunday, 19 May 2019
Venue: Westin Copley Place, Empire Room, Seventh Floor, 10 Huntington Avenue, Boston, MA 02116
Time: 8:30 a.m. – Registration and breakfast / 9:00 a.m. – 10:30 a.m. – Program
Meet our Greater China IP team at INTA!
Higher Regional Court Frankfurt am Main “Exzenterzähne II” (“Eccentric Teeth II”)
The Higher Regional Court Frankfurt am Main ruled that the unique selling point (USP) or “individual character” of a product that serves as an indication of origin may lose that function if the manufacturer of the original product has previously allowed a competitor to adopt that feature into one of its own products. However, the function as indication of origin will only be lost or diminished if the competing product that adopts that special feature is present on the market on a large scale.
The applicant, a company based in Austria, manufactures and sells plug-in technology products. These products are used to attach plastic pipes and cables for electrical installations. The unique feature of the applicant’s plug-in technology is that the products can be attached in a drilled hole without further aid. This is possible due to uniquely shaped expansion elements – called “eccentric teeth”. The product was protected by a patent until 2004.
Through an agreement with a competitor the applicant had allowed that competitor to use parts of the applicant’s plug-in technology in its own product. This competitor then implemented that technology in its new product which it started selling in Germany.
The defendant, formerly the applicant’s sales partner in Germany, began manufacturing its own products using the same plug-in technology in September 2009 and started to sell the product in 2010.
The applicant requested the immediate termination of production and distribution of the defendant’s products that allegedly contain its own proprietary technology as previously described.
Decision Continue Reading