China’s Supreme People’s Court (SPC) recently circulated its Draft “Provisions on Several Issues concerning the Adjudication of Administrative Cases on Granting and Affirming Patent Rights (I)” (最高人民法院关于审理专利授权确权行政案件若干问题的规定（一）). This Draft aims to address issues concerning administrative court adjudication and Patent Review Board (“PRB”) decisions regarding both patent examination and patent validity.
The Provisions apply to:
- patent grant cases which are court appeals filed by patent applicants that are dissatisfied with the decision handed down by the PRB following re-examination of their patent application. The provisions further apply to
- patent validity cases which are court appeals filed against decisions at the PRB pertaining to patent validity or invalidity. Both (1) and (2) are administrative cases handled by the Beijing IP Court and the Beijing Higher People’s Court (on appeal).
Claim construction, supplemental data (pharma), patent amendments, design patents and procedural issues Continue Reading
At the end of July, the German Federal Court handed down its judgment in a copyright case having huge impact for operators of open Wifi services. For the first time, the judges had to deal with Sec. 7 (4) and Sec. 8 (1) s. 2 of the German Telemedia Act (hereinafter “GTA“) as lately amended. The Court held that:
- respective operators of public Internet access points (wireless and via cable) are not liable for a violation of copyrights by third parties using those access points, and that this finding is compliant with EU law.
- However, according to the Court, instead of the intermediaries being liable for injunctive relief or damages, copyright owners could demand the blocking of operators’ “access to information” as provided in Sec. 7 (4) GTA.
This is truly remarkable, for in fact, this is likely to burden the operator in just the same way as if indirect liability had been affirmed. The question therefore is whether the legislator’s goal to create a safe harbor may still be achieved.
The German legislator is known to pursue the goal of nationwide wireless network coverage in Germany by legislative means. However, since the public provision of an Internet connection via wireless network poses a risk for the provider to be held liable for legal infringements of others, in particular file sharing, private individuals and companies are hesitant to contribute to this goal. For this reason, the German legislator decided to abolish the liability of intermediaries for operators of public Internet access points. After an unsuccessful first legislative attempt which was heavily criticized by the German legal commentators, a few weeks later, the respective provisions of the GTA were amended. This revised law came into force on 13 October 2017.
The Case Continue Reading
In the first of a series of articles looking in more depth at the findings of the Brand Benchmarking 2018 report, we examine trends in China and East Asia.
East Asia (comprising China, Japan, Korea and Taiwan) features prominently in the latest Brand Benchmarking report, while China specifically tops the list of challenging jurisdictions but also – more reassuringly – is rated as the country doing most to improve trademark protection.
On August 10, the Mexican Trademark Law Reform came into force. As reported in our previous posts, the Trademark Reform brings a range of largely positive changes for brand owners, including:
- protection of “non-traditional marks”, namely holographic signs, sound and smell marks
- mandatory acceptance of consent letters and coexistence agreements
- refusals on descriptiveness/lack of distinctiveness may be overcome by arguing “secondary meaning” (acquired distinctiveness due to its use)
- oppositions will become binding and the Mexican Trademark Office (MTO) will be required to issue reasoned decisions
- all office actions related to trademarks will be notified through the electronic IP Gazette, which will speed up the administrative proceedings
- there will be a 10% reduction in office fees for online trademark filings as well as for filings of non-traditional marks
In relation to some amendments, brand owners should be very careful as they will be required to take pro-active steps to keep their marks enforceable and alive.
In particular, for all trademarks filed or granted after 10 August 2018, submision of a declaration of actual and effective use will be required once the trademark becomes subject to use (the declaration needs to be presented within 3 months once 3 years have elapsed since registration of the trademark).
If no use declaration is presented in time, the trademark will be considered abandoned. Likewise, a respective declaration has to be presented at the time of the renewal of trademarks filed after 10 August 2018. So far, it is not required to submit actual evidence of use together with the declaration.
Another important change brand owners have to be aware of is that trademarks can no longer be filed for a broad range of goods and services but only for the specific goods and services of interest.
This change comes in line with the fact that the MTO will most likely start allowing partial cancelation actions, which means that in a non-use attack, use for each of the goods and services covered must be proven. Bearing in mind that the MTO´s previous practice was that a trademark as a whole can be defended against non-use if use of one single listing covered can be proven, this will result in a drastic change.
Further details as to the implementation and execution of the Trademark Law Reform by the MTO will be revealed once the final texts of the MTO´s guidelines has been published, which is expected by the end of August 2018.
While the above are the key points for brand owners to consider right now, we do expect further developments and will update you on these as they happen.
Spanish language version / traducción en Español here/aquí
For more information on trademark prosecution in Mexico, please consult our free knowhow resource LimeGreen IP: Mexico trademark prosecution, litigation & customs watch applications
Certification marks are part of national trade mark law in a number of Member States and since the reform of European trade mark law, the EUTMR now covers them under articles 83 to 93. According to article 83 paragraph 1 EUTMR a certification mark is
“capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.”
So what’s the difference between certification marks, collective marks and geographical indications?
Unlike collective marks, certification marks can be filed by “natural persons”. Moreover, collective marks guarantee that the respective EUTM is owned by an association not a characteristic of the protected goods and services. It is important to understand that the person applying for a certification mark does not manage a business involving the supply of goods or services of the kind certified. Evidently, the person who produces, sells or offers the goods and services cannot (and should not) also guarantee that these goods and services have a certain characteristic (for instance, high quality). As a consequence, a collective of producers which registers a collective mark cannot file the same mark as a certification mark. However, a certifying body or authority can file a certification mark and the same mark as collective mark.
Geographical indications are names or signs used on products which correspond to a specific geographical location or origin (a town, region or country). An example is the “appellation d’origine controlee” (AOC) for agricultural products in France. The use of a geographical indication may serve as a certification that the product possesses certain qualities, is made according to traditional methods or enjoys a certain reputation due to its geographical origin. As such geographical indications serve the same purpose as certification marks. However, Article 83 paragraph 1 EUTMR expressly excludes geographical indications. The systems of geographical indications in place under EU law, namely the protected designation of origin (PDO) and protected geographical indication (PGI) were considered to be sufficient and more suitable (as they might be more detailed or more tailored to the subject matter).
How popular are EUIPO certification marks and how tricky is the “regulation” requirement? Continue Reading
Copying an image from a website and using it for one’s own purposes, e.g. the illustration of a memo which eventually happens to be uploaded to another website – this happens a hundred times every day. However, such conduct is a copyright infringement. This is the clear answer the Court of Justice of the European Union (CJEU) has just given in a truly remarkable judgement (judgement of 7 August 2018, C-161/17 – Córdoba). The judges confirm both cumulative criteria which form a communication to the public of a copyrighted work, namely an “act of communication” and a communication facing towards the “public“. Accordingly, copying and re-posting requires adequate authorisation by the right holder.
In its judgement, the CJEU draws a clear distinction between re-posting of a copy and placing a hyperlink to the original work. The latter does not, under normal circumstances, form an act of communication to the public. The first does, triggering claims for injunctive relief and damages. It is fair to say that with Córdoba the CJEU has handed down yet another landmark decision in the field of digital copyright.
The case originates from Germany. The German Federal Court of Justice (BGH) suspended the respective proceedings in 2017 and submitted a question to the CJEU regarding the interpretation of European copyright law, more specifically Article 3(1) of the InfoSoc-Directive 2001/29. This article deals with the concept of “communication to the public“.
The facts in a snapshot: Photographer Dirk Renckhoff had taken a photo of the city of Córdoba. This photo was – with the photographer’s explicit permission – featured on the website of a travel agency. No technical access restrictions were implemented. A school student copied the photo from the website and used it as illustration for a school thesis. The paper eventually ended up on the school’s website. Again, everybody could access the paper and thereby the photo.
Mr Renckhoff, referring to his copyright, objected to the unauthorized use of his work. He claimed the infringement of his right of reproduction pursuant to Sec. 16 of the German Copyright Act (UrhG) as well as his right to make available the work to the public online (Sec. 19a UrhG).
The Regional Court of Hamburg as well as in the second instance the Hanseatic Higher Regional Court decided in favour of the plaintiff. In third instance, the BGH addressed the following question to the CJEU:
“Does the inclusion of a work — which is freely accessible to all internet users on a third-party website with the consent of the copyright holder — on a person’s own publicly accessible website constitute a making available of that work to the public within the meaning of Article 3(1) of [Directive 2001/29] if the work is first copied onto a server and is uploaded from there to that person’s own website?“
The Opinion by the Advocate General
On 25 April 2018, the Advocate General published his opinion on the case. He denied the requirements for the “communication to the public” because of (1) the accessory character of the photo in relation to the presentation on a school’s website, (2) the free accessibility of the photo on the third party’s website (and therefore no new public) and (3) the fact that the school student obviously acted without any intention of making a profit (see blog post). The opinion was heavily debated and everyone eagerly looked forward to what the CJEU would say.
The decision Continue Reading
Brand, mission and positive social influence. The world is changing. Brand value, revenue, cost of capital and talent retention are increasingly driven by those brands that successfully position themselves as positive social influencers. A new generation of conscious consumers, investors and organizations are looking to partner with brands that reflect their own values and beliefs. This means that successful brands must integrate social purpose into everything they do – from investment in the local community to reducing their carbon footprint around the world. Understanding and embracing this societal trend is critical to a brand’s success.
In Episode Five of our Total Brand Care series, Nicola Evans and Adrian Walker (Partners, London) talk to James Nurton about the importance of integrity and authenticity when it comes to social impact; why incorporating a positive social mission into your core identity is attractive for investors; and how CrowdReg is empowering consumers to shape business practices and ethics.
Watch the full clip here
You can find out more about our Total Brand Care offering on our HL.com page.
3D printing is transforming certain industries – so why hasn’t it been widely adopted in the pharma sector? There are likely to be a number of barriers to entry for 3D printing in this field, including identifying how to make it economically viable. Whilst a number of the key patents relating to 3D printing have expired and certain 3D printers have become cheaper, the printers and inks required for the 3D printing of pills are not yet readily or cheaply available. In addition, 3D printed pills are still being researched. Even when these challenges are overcome there is the further potential difficulty of changing the supply chain; switching from centralised to local manufacture and the supply of “inks” to enable the 3D printing of a pill instead of the pill itself.
“It’s called a disruptive technology for a reason; by the time it takes off in a particular sector it may be too late to get on the bandwagon”
Opportunities & risks
As can be seen from some of the following opportunities that this technology provides, there doesn’t have to be an all-or-nothing adoption of 3D printing; it can be used to complement a company’s existing manufacturing techniques.
Over the first half year, we have covered a number of high profile cases heard before the General Court (GC) and the European Court of Justice (CJEU). Here’s a quick roundup of the cases with a takeaway summary for each:
Preliminary ruling on designs which are solely dictated by technical functions
“The court considered the appearance of a product to be the decisive factor for a design, despite the fact that it is not essential to have an aesthetic aspect for design protection.”
Read the post here
C-163/16 – Louboutin “red sole” case
“In summary, other properties of the sign – such as the colour – may have an important impact on trade marks in that the trade mark no longer “exclusively” consists of the shape, and hence does not fall foul of Article 3(1)(e) of Directive 2008/95/C.”
We first covered the Advocate General’s second opinion here and followed up with an update on the CJEU judgement here.
CJEU confirms that unitary evidence can show acquired distinctiveness throughout the whole of the European Union
“The CJEU judgment clearly upholds the principle of extrapolation of evidence and is good news for trade mark owners. It is now clear that EUTM owners trying to show acquired distinctiveness are not expected, as a matter of a box ticking exercise, to assume a disproportionate and entirely artificial exercise of evidence collection for each and every Member State.”
Read the post here
A second market for “used” e-books – CJEU will decide
“Incidentally, this is not the first time that e-books have occupied the CJEU. On 10 November 2016, the European Court of Justice ruled on the rental of e-books (C-174/15). The court stated that the rules for the lending of e-books are the same as for the lending of physical copies – provided the lending conditions are comparable to those of physical books.”
Read the post here
Don’t judge substantiation by its cover: CJEU clarifies benchmark for EUTM oppositions
This new rule clarifies that the opponent has to submit some evidence as to the content of the particular provision. It is not entirely clear what “publications of the relevant provisions” means… The Court’s decision is a helpful guidance as there will still be a high number of cases from the past to which the reformed law will not be applicable. For the older cases it is sufficient to make a clear reference to the national provisions as well as to explain the application and scope of them in the individual case.
Read the post here
We will keep the feed going on GC and CJEU cases so watch this space!
We are running a series of webinars to help you stay up to date with Intellectual Property news and developments in the Asia Pacific region. So far we have held webinars on the areas listed below. If you were unable to attend live, the recorded version of these webinars can be accessed at the sign-up links:
- Parallel imports: Good, bad or ugly? – Recording
- Trademark litigation in Asia: strategies that can pave your way to success – Recording
- Creatively combatting counterfeiting and piracy with robust strategies – Recording
- Protecting your identity in the cyberworld – Recording
- Trademarks – Everything you always wanted to know about but were afraid to ask – Recording
Watch this space for upcoming topics.
For further information on IP topics in Asia, please visit our free LimeGreen IP know-how platform