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Germany: Introduction of Certification Marks

On January 14, 2019 Germany’s Trademark Law Modernization Act (MaMoG) went into effect, amending the German Trademark Law (MarkenG) to implement European Union trademark directive 2015/2436 (MRL). This Act introduces specific regulations for the registration of certification marks, which are an entirely new type of trademark under the German Trademark Law. Certification marks have long been accepted by the United States Patent and Trademark Office, but only were introduced to the law of the European Union on October 1, 2017. Certification marks were previously regulated in Germany under the registration process for “collective marks.”

Unlike a traditional trademark – which signifies the source or origin of goods or services – a certification mark is a type of trademark that informs consumers that particular goods or services, or their providers, have met certain standards. These standards usually refer to the material, quality, method of production, or other characteristic of the goods or services. Certifying organizations own the certification mark and also control who can use the mark by permitting its use only if goods, services, or their providers meet the organization’s standards.

In the United States, certification marks must comply with number of strict rules to preserve their integrity. These rules include:

  • that a certification mark’s owner exercise control over the use of its certification marks, such as by executing written license agreements with certified parties;
  • that the owner not provide any goods or services bearing the mark;
  • that the owner not permit use of the mark for any purpose other than to certify; and
  • that the owner not refuse to certify the goods or services of any person who meets the owner’s standards.

Failure to comply with these rules may result in the loss of the certifying organization’s rights to the mark.

The requirements for registering under the German Trademark Law are analogous, and, as in the United States, the German Trademark Law requires the certification mark’s owner to also provide information on the standards the certifications represent, such as any conditions of use, under what testing or monitoring measures any certifications are made, and what a third-party must certify for permission to use the mark.

Compliance with the certification marks provisions of the German Trademark Law will enable neutral certification companies to obtain quality seals or testing marks in Germany. This will allow German marks to expand more easily internationally, as well as allow internationally protected brands to expand more easily into Germany.


For more information see our earlier post “Europe: Everything you always wanted to know about certification marks

Deal Dynamics: Q4 2018 cross-border M&A insights

Our Q4 2018 Deal Dynamics cross-border M&A data set is available through our interactive heatmap. Deal Dynamics is a powerful, global M&A tracking tool created in partnership with Mergermarket, combining interactive quarterly deal data by markets and sectors with exclusive insights on cross-border M&A.

Market insights, not just data: Against a backdrop of growing socio-political tensions, cross-border M&A fell 17% in the final quarter of 2018, compared to the same period the previous year, with US$270 billion worth of M&A activity.

Though activity in Q4 2018 was subdued, there were bright spots in the automotive and mobility, consumer, life sciences, and insurance industries. We have built our market insights and interviews around what has been driving activity in these sectors. including:


For more analysis, visit Deal Dynamics our powerful interactive data tool with exclusive editorial content providing analysis and insights on cross-border M&A

China issues its fourth draft patent law, after over three years of deliberation

On 4 January 2019, China’s National People’s Congress (NPC) released draft amendments to the Chinese patent law for public comments (English translation available upon request), proposing, among other issues;

  • higher damages for patent infringement,
  • more options for rewarding inventors under an employee invention remuneration scheme,
  • and patent term extensions for design patents and pharmaceutical patents.

The current version of the law, which dates back to 2008, is generally seen as outdated and in need of significant amendment. The fact that this newest draft has been issued after over three years of deliberation, and that it is the fourth iteration of the draft submitted to the NPC, reflects the hotly debated nature of the new provisions of the Patent Law, and the many interests at stake.

Read more

HL.com interview – Litigating IP issues: The impact of AI and machine learning

As artificial intelligence (AI) and machine learning are integrated into an increasing number of products and services, litigation issues involving patents and trade secrets will increase. In this hoganlovells.com interview, IP partners Celine Crowson (Washington, D.C.), Jason Lohr (San Francisco/Silicon Valley), and Dr. Chris Mammen (San Francisco) discuss the evolution of AI and machine learning in a broad range of industries, their likely impacts on IP protection, and what companies can do now to prepare for future legal issues. The following questions are answered.

  • To date, there hasn’t been much patent litigation or activity around AI and IP. Do you have a perspective on when it may ramp up?
  • What types of patent issues involving AI are concerning clients?
  • What types of industries need to be thinking about the legal risks associated with IP and AI?
  • What is the difference between machine learning and AI?
  • What are some of the infringement issues companies face when they use AI or machine learning in their products?
  • From a high-level perspective, what is the distinction between patents and trade secrets?
  • What types of information should clients include in their AI-related patents?

Read the full interview on HL.com here

UK implements the Trade Mark Directive

The Trade Mark Directive (EU 2015/2436) came into force in the UK on 14 January 2019, in the form of the Trade Mark Regulations 2018, bringing about a number of key changes to UK trade mark law. The UKIPO has also published guidance on the practical effect of the Regulation (available here). Below we set out what we think are the top 8 changes to be aware of.

Key Changes

Own name defence

The own name defence has been limited so that it only applies if you are using your own personal name and therefore no longer applies to use of a company name or a trading name or style.

Graphical representation

You will no longer be required to provide a graphic, visual representation of your trade mark as part of a trade mark filing. The requirement under the new Directive is that marks be represented in a clear and precise manner. This means non-standard marks, such as sounds, colours and smells, can be represented more accurately using new technology.

Absolute objections to registration

Under the current legislation, marks which consist exclusively of shapes cannot be registered if the shape itself adds value to the goods, results from the nature of the goods or performs a purely technical function. This absolute objection to registration has now been extended to any characteristic which is intrinsic to the shapes. The IPO gives the example of a repetitive high pitched sound, which would be considered to be an intrinsic part of a fire alarm and therefore would not be registrable.

Goods in transit

You can now request that the customs authority detain goods which you believe are fake or counterfeit which are passing through the UK en route to countries outside the EU. Previously, it was only possible to stop goods where you could show that the goods were going to be put on sale in the UK.

UKIPO search reports

The UKIPO will no longer include expired trade marks in its search reports. This could lead to problems if the owner of the expired mark later applies to renew/restore the mark. If you are currently relying only on UKIPO search reports for clearance purposes, be aware that it will not include such expired marks and consider getting a report which does include these marks.

Counterfeiters

The right to take enforcement action against counterfeiters has been extended to allow you to take action, in certain cases, against counterfeiters’ actions to prepare counterfeit goods for sale. For example, you can now take action against acts such as preparing tags and packaging for sale of products or services even where the person carrying out such acts was unaware this was done without your consent.

Calculating non-use periods

You can now require a trade mark owner taking infringement action against you to prove that their mark has been used in the last 5 years. Previously, you would have had to commence a separate revocation action. The date from which a non-use period is calculated has also been changed from the date of publication, to the date of filing (or priority if applicable).

Licensing

The new provisions make it easier for a trade mark owner to take action against a licensee who is not complying with the terms of the licence. You can now take action under trade mark law, as well as under contract law.

The Polish Constitutional Court limits the right of information under the Enforcement Directive: Part 2

On 6 December 2018 the Polish Constitutional Tribunal found that the right to request information on the origin and distribution networks of the goods or services which infringe an intellectual property right from persons other than the infringer is contrary to the Polish Constitution (see our earlier post here). The written justification of the decision has just become available.

According to the written justification, the Tribunal questioned the fact that these types of information may be requested already in preliminary injunction proceedings. The Tribunal noted that a key characteristic of preliminary injunctions is that its consequences can always be reversed. Reversal is not however possible in the case of the right of information – the consequences of giving information are always irreversible.

Moreover, the Tribunal found that the right of information disproportionately limits the freedom of economic activity of persons obliged to provide such information. In particular, the Polish law does not provide sufficient safeguards against abuse of the right to information. The person who receives the requested information is under no obligation to initiate court proceedings against the infringer or to take any other action. Where no proceedings against the infringer are initiated, the information is provided for no good reason.

As the result of the decision, there is no longer a legal ground in Poland to request information on the origin and distribution channels of the infringing good from non-infringers. Requesting information from the infringer, as dictated by the Directive 2004/48/EC on the enforcement of intellectual property rights, is still allowed.

EU: New developments in the SPC manufacturing waiver legislative process

Following the European Commission’s draft proposal for implementing the so-called SPC manufacturing waiver the Committee on Legal Affairs of the European Parliament published a draft report on presenting its suggested amendments to the Commission’s proposal. The Committee in essence supports the plan to introduce the manufacturing waiver but is asking for some clarifying amendments as well as certain substantive changes.

Background

As a reminder, the Supplementary Protection Certificate (SPC) is an IP right offering patent owners an extension of up to 5 years of the basic patent’s effective protection period in order to compensate for the time needed to complete the marketing authorization procedure. This can take up a significant period of time, during which the owner of a patent that protects an active ingredient is unable to commercially exploit the period of exclusivity offered by that patent. The legal framework of SPCs is provided by Regulation 469/2009 concerning the supplementary protection certificate for medicinal products.

In order to strengthen the competitiveness of EU based manufacturers of generics and biosimilars, the European Commission intends to amend Regulation 469/2009 so as to introduce a manufacturing waiver. This is an exemption to the protection offered by SPCs which would allow the manufacture of medicinal products in the EU during the period of protection if these products are solely intended to be sold in third countries – that is outside the EU (see our earlier coverage).

Suggested amendments Continue Reading

Pharma companies may benefit from proposed patent law changes in China – Public comment invited

On January 4, China’s National People’s Congress (NPC) released draft amendments to the Chinese Patent Law, proposing expanded and enhanced protections that may provide real benefits to companies that develop new drugs.  A potentially important condition to one of the key proposed changes specific to new drugs is that it would be available only for products that are submitted for marketing approval concurrently in China and other countries.  Although clearly intended to motivate companies to prioritize seeking new drug approvals in China, the proposed patent term extension would appear to be limited to products that are first submitted for marketing approval to China and another country, and would not apply to products first filed only in China.  As a practical matter, this may limit the usefulness of the provision.

Read the full post on our Focus on Regulation blog here (see also our earlier IP  pre-release post)

The proposed patent law changes could be significant, and the public comment period, which runs through February 3, offers companies an opportunity to voice support and/or suggest revisions to enhance the proposal.

USPTO Announces Revised Guidance for Subject Matter Eligibility

The United States Patent and Trademark Office (USPTO) kicked off the new year in a big way by releasing its “2019 Revised Patent Subject Matter Eligibility Guidance”.  This guidance for USPTO examiners and Patent Trial and Appeal Board judges does not have the force of law, but it is still particularly important for those in the tech sector, whose patent applications for software and computer-based inventions have suffered from inconsistent application of the law on subject matter eligibility (35 U.S.C. § 101).  While key points from the guidance are detailed below, the bottom line is that, based on this attempt to essentially define the oft-critical term “abstract idea”, applicants can expect more predictability with regard to subject matter eligibility and fewer rejections on such grounds.

As an initial matter, the guidance notes that, on the heels of the U.S. Supreme Court’s Alice v. CLS Bank opinion, courts and the USPTO attempted to make eligibility decisions by comparing claims at issue to those found to be abstract and unpatentable in previous court rulings.  This new guidance notes “that approach was effective soon after Alice was decided, [but] it has since become impractical”, due to the sheer volume of Federal Circuit eligibility decisions and that “similar subject matter has been described both as abstract and not abstract in different cases”.

As is well known by now, the first step of the eligibility test under Alice is to determine whether the patent claim at issue is directed to a patent-ineligible concept such as the “judicial exceptions” of abstract ideas or natural phenomena.  The new guidance sets forth three categories or “groupings” of inventions that the USPTO believes constitute the term “abstract idea”:

  • Mathematical concepts (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations);
  • Certain methods of organizing human activity (i.e., fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
  • Mental processes (i.e., concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)).

Per the USPTO’s guidance, a claim which does not recite a subject matter falling within one of these three groups “should not [ordinarily] be treated as reciting abstract ideas”.

Continue Reading

US: Hogan Lovells at McCarthy Institute Symposium 2019 – NYU, 1 February 2019

 Trademark Law and Its Challenges: We are delighted to be sponsoring and speaking at the 10th annual McCarthy Institute Symposium which will be hosted by NYU Law and cover a range of thought provoking topics intersecting trademark issues, consumer behavior, and marketing. Industry-leading practitioners and scholars will present original research, including case law updates, and moderate panels covering dynamic IP and branding issues like: non-traditional trademark applications, empirical consumer survey evidence, digital marketing and search optimization, and the cultural, linguistic, and behavioral shifts affecting trademarks and brand recognition.

Senior Associate Iza Junkar will be speaking and moderating for the session Trademark Registration in the USPTO and EUIPO – A Comparative, Practical Analysis

Our attendees bring to the symposium a diverse range of experience from the international trademark group; from representation before the USPTO, to appealing decisions of the EUIPO to Europe’s highest courts, to counseling trademark portfolios for Fortune 100 companies. The Hogan Lovells trademark practice, known as a “global heavyweight” (World Trademark Review 1000), includes all aspects of brand protection and enforcement and is supported by 240 trademark professionals across the Americas, EMEA, and Asia-Pacific.


Date: Friday, February 1, 2019

Location: NYU School of Law, Tishman Auditorium, 40 Washington Square South, New York, NY 10012

Agenda / Registration: Please click here to view the full agenda and register