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LimeGreenIP News

UKIPO consultation paper contains unexpectedly wide-ranging proposals on new trade secrets law (responses by 16 March 2018)

The UKIPO has this week issued a consultation paper on the proposed UK Trade Secrets (Enforcement, etc.) Regulations 2018. The consultation seeks the views of interested parties on the draft Regulations which are intended to transpose the EU Trade Secrets Directive ((EU) 2016/943) into UK law.  The consultation will run until 16 March 2018 with a view to the UK Government publishing its response within six weeks of the end of the consultation period.  The deadline for implementation of the Directive into national law is 9 June 2018.  A link to the Consultation can be found here.

There has been lots of debate since the Directive was published as to what changes to UK law would be necessary to bring it into line with the Directive. Many thought that UK law was largely consistent with the Directive and represented the gold standard of trade secret protection in the EU.  At first glance, the changes proposed by the Regulations appear to be more wide ranging than expected.  Hogan Lovells has authored a Report for the European Commission on trade secret protection across the EU. If you would like to respond to the consultation or receive further information on this or our Trade Secrets practice generally please contact Sarah Turner or Alastair Shaw.


For more information on Trade Secrets, please click the link to visit our Topic Center

Russian Constitutional Court comments on parallel import issues

On 13 February 2018 the Russian Constitutional Court checked the compliance of the following provisions of Russian Civil Code (the “CCR“) related to parallel import with the Constitution of Russia:

  • Clause 2 of Article 1252 of the CCR on interim remedies applicable to trademark infringements;
  • Article 1487 of the CCR establishing the national exhaustion of trademark rights;
  • Clauses 1 and 2 of Article 1515 of the CCR on recognition of goods as counterfeit and available remedies of trademark owner to request removal from the market and destruction of counterfeit goods; and
  • Point 1 of Clause 4 of Article 1515 of the CCR empowering trademark owner to request payment of statutory damages in amount from RUB 10 000 to 5 000 000 (approx. from EUR 143 to 71 430) by an infringer (instead of damages recovery or compensation amounting to double price of counterfeit goods or double amount of respective due license price).

Upon results of the consideration the Constitutional Court declared that the above provisions are compliant with the Constitution of Russia but clarified the ways the rules should be applied so that there is no contradiction to the constitutional principles in practice. These clarifications reflect a longstanding discussion between IP right holders and parallel importers in Russia. Continue Reading

Germany: Hogan Lovells at Forum seminar on new EU ‘trade secrets’ directive

EU Directive 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure must be implemented in the EU Member States by June 2018. The Directive seeks to address the increasing importance of trade secrets, the growing threat to classified information and how to effectively combat industrial espionage and protect secrets. With this in mind, several questions arise: What is the status quo of German trade secrets law? How will the Directive affect current laws? What sort of additional protective measures should be taken in light of changes?

IP Counsel from our Düsseldorf office, Anne Glinke and Marcus Schönknecht, will speak at this event organised by Forum – Institut für Management. The seminar will give insight into the implementation of the Directive, its practical effects on business and how current trade secrets protection plans should be assessed and adjusted to ensure that effective trade secrets claims can be asserted in court in the future.


Date: March 16, 2018

Location: InterContinental, Wilhelm-Leuschner-Str. 43, 60329 Frankfurt

Topics:

  • Principles of trade secret protection, with case studies
  • Contents, implementation and implications of EU Directive 2016/943
  • Implementation of the Directive in business practice
  • Discussion of best practices in business

For more information, visit the Forum page for this event (German): Link

Unitary but toothless? – Limitations to jurisdiction over online EUTM infringements

German Federal Court of Justice rules on the scope of jurisdiction of national courts

In an online context, IP infringement frequently occurs simultaneously in more than one country and so the flexibility to take action where it will have the greatest impact is critical. The German Federal Court of Justice has recently ruled on the scope of jurisdiction of national courts over online infringements of EU trademarks based on the location of the infringing acts (ref. I ZR 164/16). Construing the EUTM Regulation narrowly, it held that the jurisdiction of courts of the EU Member States “in which the act of infringement has been committed” is limited to the original place of the infringing conduct which must be identified through an overall assessment.

The case

The Plaintiff manufactures and distributes perfumes globally and is the owner or exclusive licensee of a broad portfolio of national, EU and international (IR) trademark registrations. The portfolio includes the EUTM “CALVIN KLEIN”, the IR “DAVIDOFF” designating the EU and the IR “CORVET” designating Germany. The Defendant is an Italian company trading with perfumes and operating a website that presents the offered goods in various languages, including German. While the Defendant’s website presents contact details, it does not allow products to be directly ordered online. A German company contacted the Defendant via email, ordered perfumes and had the products transported from Italy to Germany through a shipping company. In the course of the transaction, the Italian Defendant sent emails on the availability and prices of the products to the German buyer. The Plaintiff claimed that the perfumes in question had not been put into circulation in the EU with its authorization and brought a trademark infringement action in Germany. The Defendant challenged the international jurisdiction of the German courts.

Findings of the Court Continue Reading

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