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LimeGreenIP News

UPDATE: UK Government comments on Draft EU Withdrawal Agreement

On 19 March the EU and the UK agreed the terms of a Brexit transition period ending on 31 December 2020. An updated colour-coded version of the EU’s Draft Withdrawal Agreement was published by the negotiators indicating which articles are provisionally agreed (highlighted in green), agreed from a policy perspective but subject to the drafting (highlighted in yellow) or not agreed but still being discussed (no highlighting). Most of the intellectual property provisions (Article 50 – Article 57)  are now agreed however there is much post-transition detail left to be decided (see commentary below).

Details of the IP provisions of the Draft Withdrawal Agreement can be found in our earlier blog here. The following areas are still subject to on-going discussions:

Geographical Indications (GIs)

The protection of GIs (and rights such as protected designations of origin or traditional terms) appears to be a significant concern for the EU Commission. Unless specific UK legislation mirroring existing EU protection for GIs is enacted post-Brexit, the valuable protection of EU geographically sensitive food and drink product indications will be lost.  Whilst this would enable UK retailers to sell English sparkling wine as ‘champagne’ and dry cured ham as ‘Parma’, protection for GIs and PDOs that benefit UK products (such as Cumberland Sausage, Cornish clotted cream and Scotch whisky) would also be lost. There are far more EU GIs and PDOs so the impact on EU businesses would be far greater.

Registration Process and Costs

The provisions as currently drafted, which refer to the registration process for ‘comparable’ UK rights by the UKIPO being free of charge, could be onerous for the UK government; the number of registrations at the UKIPO will rise dramatically with the potential for a large number of UK registrations which were never intended to be used in the UK. Whether the UK Government intends to try to negotiate a different scheme or whether it is simply withholding agreement as a bargaining chip remains to be seen.

Supplementary Protection Certificates

These provisions also remain to be decided although it is unclear why. The simple “grandfathering” regime proposed in the Draft Withdrawal Agreement (whereby pending applications at the end of the transition period continue to be governed by EU law and provide the same level of protection) seems sensible and it remains to be seen what is preventing agreement.  Again, the value of SPCs (which come at the end of the patent term, when sales are generally at their height before the product goes generic) could make this an area where the UK government feels any regime needs particular consideration, and may provide scope for a bargain.

Commentary Continue Reading

ITC Section 337 quarterly highlights

The ITC Section 337 series provides updates on recent U.S. International Trade Commission (ITC) Section 337 investigations as well as other timely ITC developments that affect your business.

The latest news round-up from our Hogan Lovells ITC Section 337 practice, includes a new section featuring “tips from the bench” by former ITC Judge Theodore (Ted) R. Essex.

Click here to read the quarterly highlights

If you would like to subscribe to the ITC quarterly highlights publication, please click here

Hogan Lovells IP scores 4 more at 2018 Managing IP Asia-Pacific Awards

March 21 – At the new format Managing IP Asia-Pacific Awards in Hong Kong, the Hogan Lovells IP practice has been awarded “Firm of the Year” in the following three categories, as well as for the new category of “Special Recognition” for innovation in IP.


  • China Copyright Foreign Firm of the Year
  • Hong Kong Prosecution Firm of the Year
  • Japan Foreign Firm of the Year
  • Special Recognition – Innovation in IP


This follows our 5 MIP awards earlier this month, including Global IP Firm of the year. We would like to thank all our clients for making these awards possible.

Have Christian Louboutin’s exclusive rights to red soles really been “kicked out” as some reports claim?

The long-awaited Advocate General’s second opinion in Louboutin (C 163/16) was delivered in February. In a nutshell, Christian Louboutin sued Van Haren Schoenen BV for trade mark infringement in the Netherlands of its Benelux trade mark shown below:

Following Van Haren’s counterclaim that the above trade mark was invalid, the Dutch national court referred the case to the CJEU and asked for a preliminary ruling concerning the interpretation of Article 3(1)(e)(iii) of Directive 2008/95/EC. This provision provides for an absolute grounds refusal for signs which consist exclusively of the shape which gives substantial value to the goods.

Not surprisingly, the Advocate General’s second opinion and his evaluation of the notion of “substantial value to the goods” which is “given by the shape” within the meaning of said Article has received a lot of attention. The majority of the reactions have branded the opinion as being a setback for Louboutin.

In order to correct such misleading reports, Christian Louboutin, who originally did not want to comment on pending proceedings, issued a press release (content here), arguing that the opinion could in fact not be regarded as a defeat for its mark. Rather, “Applying Mr Szpunar’s opinion to our case supports the validity of our trademark since the shape of the outsole to which the red colour is applied is not intrinsically valuable.”

Indeed, the Advocate General’s opinion seems to support the validity of this mark: At paragraph 54, he explicitly stated that the reputation of the trade mark or its proprietor itself was not a decisive factor for giving “substantial value” to the goods. This statement indicates that – according to the Advocate General – the following test needs to be applied: Continue Reading

UK/U.S. LimeGreen Live Webinar: UK unjustified threats – what you need to know

The perils and challenges of pre-action communications and how it may affect your later litigation options are often under-estimated.

The UK unjustified threats regime, which can fix both the writer of a cease and desist letter and their employer or client with liability, has caught many an unwary lawyer.

Join us on 10th April for the second in our LimeGreen Live webinar series. We will discuss how you can avoid pitfalls associated with the regime, and position yourself best to take advantage of your IP rights before any litigation can start.

Background – differing approaches across the Atlantic
Even where it is possible to avoid liability by, for example, showing how your IP right is infringed, this can have adverse consequences on your later strategic options in litigation. In the US, avoiding unwanted litigation in the form of declaratory judgment actions may likewise influence your approach to cease and desist communications.

Recent changes to the law in the UK have made it easier and safer to send clearer pre-action communications in the UK or which may relate to the UK, which may include online use that targets the UK. In the US, creative approaches to more traditional cease and desist activity may help you preserve the best possible position and strategic outlook while minimizing the risk of declaratory judgment action.

Date: Tuesday, 10 April 2018

Time: 8:00 a.m. PST / 10:00 a.m. EST / 4:00 p.m. BST

Click here to register for this webinar

Click here to download a calendar appointment containing a link to join the webinar

For any questions about the webinar, please contact Tom Goddard

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.

China announces plan to consolidate administration and enforcement of trademarks, patents and geographic indicators.

The National People’s Congress (“NPC”) is the top legislature and the highest organ of state power in China. The NPC is elected for a term of five years and holds a plenary meeting every year to, among others, determine statue issues, appoint high-level government officials and enact or amend the Constitution or other national laws.

On March 17, 2018, The 13th NPC approved the proposal made by the State Council, China’s chief administrative authority, to restructure the administrative organs under the State Council.

For IP owners and IP professionals, what they need to know is after the restructuring:

  • The State Intellectual Property Office (“SIPO”) will take over examination and registration of trademarks from the China Trademark Office (“CTMO”) and the Trademark Review and Adjudicative Board (“TRAB”).
  • The SIPO will also take over registration and administration of geographic indicators from the General Administration of Quality Supervision, Inspection and Quarantine.
  • The SIPO will have additional responsibility to guide the enforcement of trademarks and patents but will not handle such enforcement on a daily basis.
  • The SIPO will be subordinate to a new State Administration for Market Supervision (“SAMS”). The SAMS will have broad power including but not limited to enforcement of patents and trademarks. Hence SAMS’s enforcement teams (whose names are not known) will be in charge of trademark and patent enforcement with guidance from the SIPO.
  • The SIPO will remain to determine whether to grant patents, handle pre-grant proceedings (such as review of refusals) and post-grant invalidation proceedings.
  • The State Administration of Industry and Commerce will cease to exist. As an outcome, its subordinate CTMO and TRAB will cease to exist, with their responsibilities to be taken over by the SIPO and other departments of the SAMS.

One purpose for the above restructuring is to consolidate government resources in administering and enforcing IPRs and to make the administration more efficient. It is not known how long the restructuring will take to complete. There are open issues about the new structure. For example, it is not clear whether the SIPO will take over the administration and/or enforcement of copyright from the National Copyright Administration. We will keep you updated of any development that may affect the administration and enforcement of IPRs in China.

We set out below the charts showing the current administration structure of IPRs and the new structure.

A full overview of the changes made to the Chinese Government agencies by this session of the NPC can be found here

Hogan Lovells Expands IP Practice with Addition of Prominent Trademark Lawyer Julia Matheson

We are pleased to announce that leading trademark lawyer Julia Anne Matheson, who specializes both in portfolio management and disputes, has joined the firm as a partner in Washington, D.C. Matheson joins Hogan Lovells after nearly 24 years with the respected IP firm Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.

“Julia is one of the heavy hitters and most recognizable names in the trademark field,” said Celine Crowson, head of Hogan Lovells’ Intellectual Property, Media, and Technology practice in the Americas. “Combining her standing in the market with her relationships and familiarity with many of our existing clients makes Julia an ideal addition to our trademark practice.”

Matheson’s practice covers all areas of trademark and unfair competition law including trademark clearance, counseling and prosecution, global brand development and portfolio management, due diligence, licensing, social media, and domain name disputes.  She frequently handles global enforcement programs and opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) and has significant experience litigating in federal district courts. She also handles protection and enforcement matters related to trade dress and product configuration as well as false advertising.

Matheson represents clients around the world in numerous industries including consumer goods, personal care products, fashion, entertainment, pharmaceuticals, biotechnology, telecommunications, manufacturing, and oil and gas. Her clients range from startups to Fortune 500 companies and multi-national organizations.

Throughout her career, Matheson has been recognized by peers and clients as a leader in her field. Legal 500 named her one of only seven lawyers nationally as a Leading Lawyer for Trademarks: Non-Contentious. She has also been recognized in World Trademark Review’s WTR 1000 and World IP Review among others.

“I’ve had the opportunity to work closely with Hogan Lovells over the years through mutual clients and industry organizations.  I have consistently found them to be among the best in the industry,” said Matheson. “The opportunity to join a premiere trademark practice with a broad, global reach while also expanding their domestic footprint is thrilling and I’m eager to hit the ground running.”

Matheson earned her J.D. from Columbia University School of Law in 1990 and her B.A. from Johns Hopkins University in 1988.

Cross-border parcel delivery – European Parliament approves the regulation proposal

Some time ago now, the European Commission launched an initiative to improve transparency and regulate the cross-border parcel delivery sector as part of its aspiration to create a real Digital Single Market. Clearly, no pan-European online market can exist without a functioning delivery system covering the entirety of the Union. A draft regulation on this subject was first published on 25 May 2016 (COM (2016) 285). Since then, the proposal has been debated both on a national as well as a European level and now, the European Parliament has agreed on an amended text of the regulation.

Legislative Process

The initiative goes back to a communication issued by the Commission in 2012. It emphasized the need to launch a public consultation to identify potential hurdles related to the delivery of goods purchased online, be it by consumers or companies (SMEs in particular). The Commission summarized the responses, and in 2013 issued a roadmap by way of yet another communication. In particular, the fragmented state of the cross-border parcel delivery market was highlighted as an obstacle to EU endeavours to create one single market within the Union.

The proposal for a regulation on cross-border parcel delivery services was then published on 25 May 2016. The Commission’s main objectives were to

  • Improve the market’s efficiency through effective regulatory oversight and increased competition, and
  • Improve the price transparency to reduce unjustified tariff differences as well as the prices overall.

The proposal gave rise to quite some discussion. Eventually, in mid-December 2017 the European institutions reached a then still informal understanding on the regulation’s final wording. This Tuesday, 13 March 2018, the Parliament took a formal vote on the agreed text. A large majority of 604 parliamentarians voted in favour of the regulation (report).

The coming regulation features a series of mandatory information that every parcel delivery service provider will have to submit to the national regulatory authority of its country of establishment. The regulation also establishes a mechanism by which the national regulatory authority will be able to assess the affordability of cross-border tariffs yearly. Moreover, the law will include measures to ensure a transparent and non-discriminatory cross-border access to such services.

What needs to be noted also is the fact that the regulation will leave some room for manoeuver for the Member States as regards transposition. For example, each Member State may decide which type of “effective, proportionate and dissuasive” penalties shall be enacted.

Next steps

This piece of legislation will inevitably have a significant impact on e-commerce. Although, in essence it is regulating the environment in the “real” world, European e-commerce rests on functioning cross-border delivery facilities. Therefore, it is fair to say that this regulation marks another milestone in the Commission’s ambitious Digital Single Market strategy.

The regulation still requires formal approval by the Council, which however can almost be taken for granted, considering the compromise already reached in December 2017. The approval is a matter of weeks away rather than months. The regulation will then be officially published in the Official Journal of the European Union.

For further information on the Digital Single Market and its practical impact, please visit our website www.dsmwatch.com.

CJEU on designs which are solely dictated by technical functions

On 8 March 2018, the CJEU issued a preliminary ruling in a case that had been referred by the Higher Regional Court of Düsseldorf, Germany.

The decision concerns Article 8 (1) of Regulation No 6/2002 which excludes the features of appearance of a product from protection which are solely dictated by its technical function. If all features are technically dictated, the design in question is invalid.

The plaintiff, DOCERAM GmbH (“DOCERAM”), brought an action against CeramTec GmbH (“CeramTec”) based on a number of registered Community designs which protect centring pins for welding. CeramTec brought a counter-claim for a declaration of invalidity of the designs, one of its arguments being that the features of appearance of the products in question were dictated solely by their technical function.

In first instance, the action brought by DOCERAM was dismissed and the Regional Court of Düsseldorf declared the designs at issue to be invalid according to Article 8 (1). In the appeal instance, the case was referred to the CJEU.

The questions of the Higher Regional Court were:

(1)     Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of [Regulation No 6/2002] which excludes protection, also if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design?

(2)      If the Court answers Question 1 in the affirmative:

From which point of view is it to be assessed whether the individual features of appearance of a product have been chosen solely on the basis of considerations of functionality? Is an “objective observer” required and, if so, how is such an observer to be defined?

The General Court’s decision Continue Reading

ITC Section 337 Investigations Webinar – Recording

On 1 March we held our first webinar in the LimeGreen Live series which focussed on International Trade Commission (ITC) Section 337 Investigations.

The webinar was 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 provides background on the ITC Section 337 forum and discusses 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

If you missed the webinar, you can now catch the recording here

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.

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