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LimeGreenIP News

Hogan Lovells appoints IP partner Leopold von Gerlach as Chair

We are delighted to report that Hamburg-based Intellectual Property partner Leopold von Gerlach has been appointed as Chair of Hogan Lovells’ Board from 1 May 2018. Leo will serve in the post for three years. He takes over from London real estate partner Nicholas Cheffings who will have served two full terms as Chair, starting in May 2012. Nicholas will continue with his market-leading real estate practice.

Commenting on the appointment of Leo, Hogan Lovells’ current Chair Nicholas Cheffings said:

“Leo taking on the role of Chair is a natural step for him and for Hogan Lovells. Leo has been an excellent contributor to the Board as the elected representative for Continental Europe and he has a very deep sense of the culture, ethos and heritage of our firm.”

Says Leo von Gerlach:

“Hogan Lovells is uniquely positioned in the market – it has unrivalled strengths on both sides of the Atlantic and a strong shared single sense of identity based on common values which transcend national boundaries. As the elected Board member for Continental Europe it has been very impressive to see just how cohesive we are as a firm and how well we collaborate and innovate for the benefit of our clients – something which they see as truly distinctive for us.”

Leo first joined the Board in May 2014 as the representative for Continental Europe. As an accomplished IP litigator with extensive trial experience, Leo mainly acts against counterfeit and grey market goods, look-alikes, and other types of IP infringements. Leo is also a staunch contributor to LimeGreen IP News and continues to drive our IP Enforcement Focus series as well as giving many short video summaries of European cases before the courts.

His clients from various industries include The LEGO Group, Citi, eBay, PayPal, Estee Lauder and Gibson Brands. He has been named as ‘one of the leading names in trademark law’ by the World Trademark Review 1000 report and has also been commended by Chambers for his strategic approach to IP litigation. He and Washington, DC partner Cate Stetson led the 2015-2016 project to produce the consolidated history of the firm.

As a member of the Board Leo has served on the Partner Advancement Committee, working with other members of the Board and members of the firm’s International Management Committee on the promotion of associates and counsel to the partnership.

Heavy jail sentence handed down on illegal set-top boxes sellers in Hong Kong

On 28 December 2017, the District Court of Hong Kong handed down sentences varying from 21 to 27 months’ imprisonment against 3 individuals who took part in a scheme that enabled users of the “Maige Set Top Box” (the “Maige Box“) to view pay TV channels for free.  This case sets one of the heaviest custodial penalties imposed in Hong Kong for Internet piracy to date.

Copyright Infringement – sharing of decrypted signals

During the 2014 FIFA World Cup, the Hong Kong Customs & Excise Department (“HKCED“) located suspicious webpages promoting the “Maige Box” which claim to enable users to view paid TV channels without having to pay monthly subscription fees.  These illegal Maige Boxes were sold in a stall in Sham Shui Po at HKD2,500 (about USD320) each.  Once connected to the Internet, the Maige Box streams over 190 channels to users for viewing, among which 11 were paid TV channels. Essentially, these Maige Boxes circumvented the encryption protection that was applied to protect the copyright of the programmes of those paid TV channels.

Three individuals, were arrested and charged with 6 offences including providing a circumvention device or service, conspiracy to defraud and other violations against the Copyright Ordinance (Cap. 528).

One of the defendants was found to have acted upon the request of a Mainland Chinese individual to set up a signal transmission system in Hong Kong by subscribing for 7 paid TV accounts and installing 7 decoders at home. The transmission system then captured and sent decrypted TV channel signals to a server located in Mainland China, which were then streamed to individual Maige Boxes.

Considering the potential substantial loss caused to the paid TV operator (and after factoring in the defendants’ guilty pleas and assistance provided to the prosecution), the Court sentenced the three individuals to 21-27 months’ imprisonment.

Significance of the Case

Charges of “providing a circumvention device or service” and “conspiracy to defraud” are, for the very first time, successfully applied in the criminal prosecution of an online piracy case in Hong Kong. Hopefully, this decision sets the scene for more vigorous enforcement actions against illegal set-top boxes which have been troubling pay TV operators and content owners. It is also worth noting that in addition to or in lieu of criminal charges brought by the HKCED, it is also open for the aggrieved parties to take civil actions to claim and recover losses arising out of the infringement.

DSM Watch: Leaked JRC Study calls into question neighbouring right for press publishers

The evolution of a new neighbouring right for press publishers is currently the subject of wide and heated debate. The European Commission proposed such a right in Article 11 of its proposal for a new directive on copyright in the Digital Single Market (Draft Copyright DirectiveCOM(2016) 593 final). The European Parliament’s first approach to this proposed right has been rather skeptical. The Legal Affairs (JURI) committee’s initial report merely proposed a statutory presumption of representation of authors of literary works contained in press publications and the publishers’ legal capacity to sue in their own name when defending the rights of such authors. JURI’s position however changed somewhat when Axel Voss took over the role as rapporteur from Therese Comodini Cachia.

Most recently, we have now seen a leaked draft of a paper analysing the effect such a neighbouring right is likely to have if enacted. The Joint Research Centre (JRC) of the European Commission is authoring a paper headed “Online News Aggregation and Neighbouring Rights for News Publishers”. Although currently only a draft the message is however quite clear. JRC reaches the conclusion that “law can create a right but market forces have valued this right at a zero price”.

Background

Whether press publishers require their own rights in articles they publish, separate from the copyright of authors, is a question that has been in debate for quite some time. Germany as well as Spain have already passed legislation introducing such a neighbouring right for press publishers on a national level. Even though the provisions differ in the detail, the underlying thought is the same: press publishers have rights allowing them to participate in secondary use being made of their online publications, e.g. by news aggregators. Whoever goes beyond referencing so-called “snippets” (very short parts of the actual article) must obtain a license and pay a fee.

So far, neither in Germany nor in Spain has the concept worked out in practice. In other words, the press publishers have not been able to negotiate licenses that have generated any significant revenue. News aggregators and search engine providers have refused to pay for the content they are gathering. The core argument is that they are the ones generating traffic on the publisher’s websites and thereby making those sites more attractive for advertisements.

It is noteworthy that under German law, there is also a case pending before the European Court of Justice. A key question is whether the respective domestic provisions lack the necessary notification to the EU. Thus, the dispute is about the formal conformity of the law (see blog post).

The draft paper Continue Reading

.NL leads the way in the fight against malicious online activity

Malicious activities are an ongoing problem across the Internet and growth is increasing as a result of ever more sophisticated phishing attacks.  One ccTLD Registry that has demonstrated it is taking these issues very seriously is SIDN, the Registry for the .NL extension (Netherlands).

The Anti-Phishing Working Group (APWG) regularly publishes a Phishing Activity Trends Report which analyses phishing attacks reported to them by its member companies and its Global Research Partners, through the organisation’s website.

In the last quarter of 2017 the APWG released its Phishing Trends Report for H1 2017 and indicated some key findings:

  • Hundreds of companies are being targeted regularly, at least every few weeks, while a smaller number of companies are attacked intermittently.
  • Phishing attacks occurred most frequently in the payment, financial and webmail sectors.
  • There has been an increase in the number of phishing attacks using free hosting providers or website builders.
  • In the new generic Top Level Domains (gTLDs) and country code Top Level Domains (ccTLDs), much of the phishing activity was concentrated in a small number of domains.

The .NL registry operator SIDN also recently published an article on the subject called “A fight on three fronts”.  Abuse is a growing problem, according to Lilian van Mierlo, the Registration & Service Manager at SIDN, who states:

“There are some types of abuse that we used to get reports about maybe ten times a year, and now we’re getting a thousand reports about. Or more! It’s not just that there’s more abuse going on. The abuse is also becoming more sophisticated. Most phishing sites used to stand out a mile, with clumsy layouts and machine-translated text. Whereas a lot of them nowadays are hard to tell apart from the real thing”.

The article talks about the three measures that SIDN have implemented to fight abuse: Continue Reading

China: Annual online piracy crackdown campaign 2017: Results announced

The results of the 2017 edition of China’s annual online piracy crackdown campaign, called the “Sword Net Action” (剑网行动), were recently published. As we announced earlier, the 2017 crackdown campaign promised to take a heavy hand against the unauthorized online distribution of films, games, TV programs and other online copyrighted content.

The crackdown campaign was a joint effort of four ministerial bodies and resulted in the following measures: 1,655 infringing websites were taken down, 274,800 infringing links were deleted, 1.51 million of infringing works were confiscated, and 37 cases were transferred for criminal investigation.

We highlight some of the most interesting enforcement cases of the crackdown campaign below: Continue Reading

Welcoming new IPMT partners and counsel in 2018

We are delighted to announce our new Intellectual Property, Media & Technology (IPMT) partners and counsel. The promoted members of the IPMT practice span patents, trademarks, unfair competition, domain names, copyright, designs, trade secrets, and IPMT Transactions, and include representatives from the Americas, Asia and Europe. Their promotions are very much deserved and we wish them success in their new roles.

Firm wide, they form part of the 31 new partners and 38 new appointments to the role of counsel in offices across a network spanning Africa, the Americas, Asia, Australia, Europe and the Middle East. Hogan Lovells CEO Steve Immelt said:

“We are seeing real momentum with these promotions – in terms of diversity of our practices, our offices, by gender, and by ethnicity.   They represent the globally diverse nature of our business. I congratulate all those who were promoted and wish them every success as they continue their career with us.”

Meet our new IPMT partners

Meryl Rosen Bernstein – Meryl is based in the Washington DC metro area and helps internet, fashion, software, and pharmaceutical companies with a range of intellectual property and technology transactional matters. She co-heads the firm’s Global Retail, Consumer Products, and Fashion group and has expertise in sourcing, supply, distribution, sales and marketing arrangements. She also has significant experience handling life sciences acquisitions and transactions, including commercialization, collaboration and licensing relationships.  Having served as Assistant General Counsel at Gilt Groupe, the e-commerce company, Meryl also helps her clients with cutting-edge issues relating to their online marketing and sales initiatives, social media presence, and technology and distribution platforms.  She serves as President of the Board of Ellevate’s (global professional women’s network) Washington, DC Chapter.

Henrik Lehment – Henrik is based in Dusseldorf and advises on all aspects of intellectual property rights with a particular focus on patent law. Over recent years, Henrik has been heavily involved in the “smartphone wars” and helped his industry clients in litigation both against competitors and non-practicing entities. In the automotive sector, Henrik represents his clients both in cases concerning traditional automobile technologies as well as emerging technologies related to connected cars and automated driving.

Benjamin Schröer -Benjamin is a patent litigator who advises and represents clients from the telecommunications, automotive and mechanical engineering industries in patent infringement and validity cases. In addition, he advises clients in licensing negotiations relating to the case law on Standard Essential Patent (SEP) and Fair, Reasonable and Non Discriminatory (FRAND) patent licensing terms.

 

Helen Xia – Helen is based in Beijing and focuses her practice on contentious and non-contentious IP matters involving trademarks, copyright, patents, unfair competition and IP licensing. She has strong experience in IP litigation and has advised clients on administrative, civil, and criminal litigation involving IP infringement in China. Helen represents clients from a wide range of industries, including construction, mining, fashion, food, multimedia, telecommunications, computer and entertainment and is director of Hogan Lovells (Shanghai) Intellectual Property Agency Service Co., Ltd., an IP service affiliate established under Hogan Lovells International LLP.

Meet our new IPMT counsel

Yu-An Chang – Yu-An is based in Shanghai and has broad experience in advising on all aspects of brand and copyright protection and litigation, as well as IP and technology-related transactions.  He acts for a diverse range of IP owners in the region including consumer brands, and technology, healthcare, education and toy companies.  Yu-An regularly handles multi-jurisdictional IP enforcement actions and assists IP owners in negotiating and drafting IP licenses and commercial agreements.

 

Thorsten Klinger – Thorsten is based in Hamburg where he advises national and international companies on all matters of trademark and unfair competition law. He has particular experience in the strategic management of mid-size and large trademark portfolios, including the legal support of national and international product roll-outs and name clearances. Thorsten also focuses on online and domain name law, advising clients on their domain name portfolio and representing them in UDRP proceedings before WIPO. Thorsten has mainly helped companies from the telecommunications and IT sector, as well as from other innovation-driven technology branches.

Serena Lim – Serena is based in Hong Kong and her practice focuses on brand protection and enforcement. She acts predominantly for consumer brands including those in the food and beverage, fashion and retail industries, as well as pharmaceutical and technology companies. Serena helps brand owners with securing trademarks protection, either through negotiating co-existence agreements, reaching amicable settlements in the course of contentious proceedings, or simply dealing with difficult Registry objections. Serena acts before the Courts or Registry in infringement or passing off actions and other inter-parte proceedings. She also has extensive experience in dealing with issues posed by trademark hijackers, cyber squatters, shadow companies and counterfeiters. Serena is currently the Vice President of The Hong Kong Institute of Trade Marks Practitioners.

Fabian Pfuhl – Fabian is based in Frankfurt. He is well-known for his anti-illicit trade work, particularly in the pharmaceutical and consumer goods sector. Fabian’s enforcement practice focuses on defending his clients rights against any forms of black and grey market trades. His advice covers civil actions as well as criminal law aspects and customs measures. Based on his extensive experience in his field of expertise, Fabian maintains excellent relations with the criminal investigation and prosecution authorities. Since 2012, Fabian has been a lecturer at the Hochschule Darmstadt where he teaches License Law and Contract Design.

Vironika Pilyugina – Vironika is based in Moscow where she focuses on regional and global IP portfolio management and dispute resolution in sectors including consumer, life sciences and healthcare and automotive. She helps various Russian and international clients in trademark and patent litigation and advises on brand protection and enforcement strategies in Russia. Vironika represents clients before the Russian PTO and Chamber for Patent and Trademark Disputes under the Russian PTO as well as before the Russian courts and competition authorities.

Marcus Schönknecht – Marcus is an experienced IP litigator and advisor based in Dusseldorf. He specializes in patent law, including employee inventions law, as well as trade secrets, unfair competition, trademark, and design law. Marcus’ experience comprises a wide range of industry sectors including engineering, telecommunications, chemicals, and medical devices.

Stella Wong – Stella is based in London and is dual qualified as a medical physician and a solicitor. She predominantly advises pharmaceutical and medical device companies on complex multi-jurisdictional patent litigation, and she has also advised on some of the largest European technology patent disputes. Stella has developed a specialist knowledge in the field of 3D Printing. Stella has qualified as a Member of the Royal College of General Practitioners and still works as a general practitioner on Saturdays. She has been named a “rising star to watch” 2016 & 2017 in IP Stars directory of Managing Intellectual Property.

Ernest Yakob – Ernest is based in New York and with years of experience in both the lab and the law, he has unique insight into the complex patent issues facing his life sciences clients. He focuses on life sciences patent litigation in federal court and the U.S. Patent Trademark Office. He also routinely advises clients on a wide range of IP matters, including patent prosecution and opinions, and IP licensing and due diligence. In addition to being a registered patent attorney, Ernest holds a doctorate degree in microbiology and immunology from Albert Einstein College of Medicine, as well as academic degrees in molecular biology and chemical engineering.

Sites get ICEd in transatlantic assault on cyber crooks

As part of a sustained and coordinated effort, law enforcement agencies on both sides of the Atlantic have rounded off their on-going fight against cybercrime known as “Operation In Our Sites” with the traditional annual flourish on “Cyber Monday”.  In the U.S., and increasingly elsewhere, the Monday following “Black Friday” (the first Friday after Thanksgiving), which sees an avalanche of discounted consumer goods unleashed onto the public via the Internet, is known as Cyber Monday.  Hence, the day’s special resonance with the fight against cybercrime and counterfeiting.

Operation In Our Sites is a continuing effort to detect and combat intellectual property violations on the Internet – notably counterfeiting – commenced in 2014 by the U.S. government’s National Intellectual Property Rights Coordination Center (NIPRCC), a body managed by the U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI) unit.  This year, in a joint initiative between (ICE), Europol, Interpol and industry members called “In Our Sites / Project Transatlantic VIII”, around 50,385 illegal domain names were seized and 320,701 e-commerce / social media links removed across the globe.

In the U.S., once seized, domain names associated with counterfeiting and fraudulent websites are redirected to the NIPRCC’s seizure banner which, the organisation asserts, “serves as a tool in educating the public about the perils of counterfeit items available on the Internet.”

Speaking about the importance of the operation, acting NIPRCC Director Nick Annan stated that: “Targeting copyright-infringing websites that market dangerous counterfeit goods to consumers and engage in other forms of intellectual property theft will continue to be a priority for law enforcement” going on to add that: “Strengthening our collaboration with police authorities around the world and leaders of industry will reinforce the crackdown on IP crimes, and demonstrate that there is no safe haven for criminals committing these illicit activities.”

On this side of the Atlantic, as part of the joint effort, the European Union Agency for Law Enforcement Cooperation’s (Europol) Intellectual Property Crime Coordinated Coalition (IPC³) seized more than 20,520 domain names that were selling counterfeit goods, a substantial increase on the 7,776 domain names seized over the first three years of the operation.  Europol put this down to “a global operation that saw a big range of anti-counterfeiting associations and brand owner representatives joining law enforcement authorities, facilitating international cooperation.Continue Reading

2018 Spells a new beginning for IP arbitration in Hong Kong

Arbitration (Amendment) Ordinance 2017 comes into effect

The long-awaited Arbitration (Amendment) Ordinance 2017 (the “Amendment Ordinance“) is finally applicable to arbitrations commenced on or after 1 January 2018 or to arbitrations commenced prior to this date if the parties themselves choose to apply the amendments to their arbitrations.

By introducing sections 103A to 103J into the Arbitration Ordinance (the “Arbitration Ordinance“),  the amendments make clear that disputes involving Intellectual Property Rights (IPRs), including issues of validity, are arbitrable under Hong Kong law. The amendments also clarify the following issues:

  • it would not be contrary to public policy to enforce an ensuing award solely because the award involves questions of IPRs
  • any awards in arbitration proceedings involving IPRs will only be binding between the parties
  • legal rights of third parties not a party to the arbitration proceedings (including licensees) will not be affected.

Should I include an arbitration clause in my IPR agreements?

Whether to include an arbitration clause in a given IPR agreement will require an analysis of the benefits and risks involved.

In particular, it would be useful to consider the following factors when making a decision: Continue Reading

China issues its second Draft E-Commerce Law

On 7 November 2017, the Standing Committee of the National People’s Congress (“NPC“) published the second draft of the E-commerce Law (电子商务法(草案二次审议稿), “Draft“).  The goal of the Draft is to regulate China’s burgeoning e-commerce sector, and thereby facilitate growth, maintain “market order”, and eradicate scams and counterfeits.

It is particularly striking that the Draft was published only days before China’s biggest online shopping event, “Double Eleven” (Singles’ Day), which takes place annually on 11 November.  This year, no less than USD 25 billion was spent on e-commerce on Single’s Day, a 40% increase compared to last year’s results.  These new results emphasize the growing importance of this sector in China and the need for regulation.

The legislation work for the E-commerce Law was first initiated in December 2013 and was planned to be submitted for Standing Committee review during the 12th five-year term of the NPC (i.e., March 2013 to March 2018).  The first draft of the E-commerce Law was published for comment on 27 December 2016, which immediately caught extensive public attention.  On 31 October 2017, a second review of the draft E-commerce Law was conducted.  As a rule, a legislative bill placed on the agenda of a meeting of the Standing Committee must be put to vote after three reviews by the Standing Committee. This Draft would therefore only need to go through the third review before it is passed into law. There is, however, no statutory time limit on when the third review would happen.

In this article we summarize the highlights of the Draft: Continue Reading

Europe: Double victory for Coca-Cola. General Court stops free-riding from outside EU

Judgment of 7 December 2017 in Case T-61/16 – The Coca-Cola Company v. EUIPO / Modern Industrial & Trading Investment Co. Ltd (Mitico)

The General Court confirms that actual commercial use of an EUTM application can demonstrate unfair advantage for the purposes of Article 8(5) EUTMR, even if such commercial use only occurred outside of the EU. Use in non-EU countries may be a basis for a logical deduction relating to the likely use of the sign in the EU and may constitute prima facie evidence of risk of unfair advantage. We take a look at what this important development means for trademark owners.

Background

This Coca-Cola saga started back in 2010 and reached the General Court (GC) twice, ending with a fully-fledged victory for Coca-Cola.

Coca-Cola filed an opposition against Mitico’s EUTM application for the “Master” logo shown below, which sought protection for beverages (including cola) and food products in classes 29, 30 and 32. The opposition was based on the earlier marks shown below. The EUIPO refused the opposition in all instances due to lack of similarity between the signs. Coca-Cola then brought the case before the GC claiming breach of Article 8(5) EUTMR.

The first time Coca-Cola succeeded before the GC (see judgment of 11 December 2014 in Case T-480/12 and our blog post), the GC held that not only were the first four marks similar to the application (albeit to a low degree), but there was also a link between the signs. In particular, it acknowledged certain degree of visual similarity due to presence of the ‘long tail’ and the same unusual cursive script used. The GC also held that the Board erred in refusing to take into account the below evidence of actual commercial use which shows how Mitico’s product mimics the image of Coca-Cola’s getup for soft drinks. Continue Reading