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LimeGreenIP News

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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Domain Names: The dangers of “snapping”

DNS Belgium, the Registry operating the .BE country code Top Level Domain (ccTLD), recently published an article warning domain name owners of the risks inherent in the practice of “snapping”.  Although anyone can legitimately snap up an expired domain name, problems can arise when cybercriminals grab expired domain names and then use them in damaging ways, such as pointing them to fake retail websites or re-creating email addresses based on them.

The practice of “snapping” (also known as backorders or snapbacks) has been around for some time and domain name owners should carefully consider the potential risks before allowing their domain names to expire.  The cost of renewing a domain name is, after all, small in comparison with the cost of legal action to recover one that has been registered by a third party who is using the domain name in a way that is damaging. Continue Reading

Hogan Lovells named MIP Global Firm of the Year

London, 9 March 2018 – Hogan Lovells global IP practice has been awarded the accolade of ‘Global IP Firm of the Year’ at the Managing Intellectual Property EMEA awards, in recognition of its market leading and innovative work on matters across Europe and beyond.

The firm was shortlisted in 16 categories, also winning awards for:

  • Europe Patent Contentious Firm of the Year
  • Europe Trade Mark Contentious Firm of the Year
  • Germany Patent Contentious Firm of the Year
  • United Kingdom – Impact Case of the Year – for achieving a landmark Supreme Court ruling in Eli Lilly v Actavis UK Ltd & Ors

Commenting on our wins, Global Head of IP, Andreas von Falck said:

“This welcome and well-deserved recognition for our global practice follows a very successful year in which we have obtained landmark decisions for major clients Eli Lilly, adidas, Starbucks, LEGO and others. These accolades reinforce our position as one of the world’s leading IP firms – we remain the only firm ranked in Band 1 for IP in Chambers Global, Europe-wide and Asia-Pacific guides. We look forward to the other upcoming MIP awards dinners this month

EU Commission Draft Brexit Agreement clarifies continued Protection for Unitary IPRs

On 28 February 2018, the European Commission published the draft Brexit Withdrawal Agreement between the EU and the UK.  The paper is, of course, only a draft and the UK government has not yet commented on or agreed to any of its terms but it is the first time we have had a concrete statement of either side’s position in the negotiations.  It will be discussed by the EU Council and the Brexit Steering Group of the EU Parliament over the next few weeks before it is negotiated with the UK government.

Article 50 et seq of the draft agreement sets out the provisions in relation to the continued protection of intellectual property rights with unitary character (“Unitary IPR”) in the UK, including:

  • European Union Trade Marks;
  • Registered Community Designs;
  • Unregistered Community Designs; and
  • Protected Geographical Indications (GIs)/Protected Designations of Origin (PDOs)/plant varieties.

The Withdrawal Agreement also provides for continued protection of database rights (a sui generis right of EU law).

In line with the Commission’s position paper released on 6 September 2017 (which we reported on previously here) the Withdrawal Agreement largely follows the so called “Montenegro” model whereby existing protection of Unitary IPR is continued automatically with equivalent separate UK protection granted to Unitary IPR rights holders at no cost to them. (This only applies to Unitary IPR that has already been granted or registered and not to pending applications). The draft Withdrawal Agreement sets out a “transition period” during which the status quo will be maintained. This transition period will commence on the day of entry into force of the Withdrawal Agreement and end on 31 December 2020.

As well as clarifying the details set out in the earlier position paper, the Withdrawal Agreement also provides further and new details in relation to the following areas: Continue Reading

Two wins by the LEGO Group in China against Chinese copycats

The LEGO Group rarely puts itself under the spotlight by talking about litigation but it made an exception by commenting on its recent victories against two Chinese infringers.

The IP lawyers behind said victories are from our Shanghai office and its associated office, Hogan Lovells Fidelity, in the Shanghai Free Trade Zone. Two Chinese toy makers (the “defendants”) were jointly manufacturing and selling imitation LEGO products (“BELA Products”). The lawsuits were filed before the Shantou Intermediate People’s Court based on copyright infringement and unfair competition.

Read our press release here

dotFM embraces emoji domain names

dotFM, the Registry responsible for the .FM Top Level Domain (TLD), is to join the handful of TLDs that are making emoji domain names available to register.  The Registry, which is the country code Top Level Domain (ccTLD) for Micronesia but which, in view of its .FM extension, has up to now mainly marketed its TLD to radio stations, has released a list of emoji domain names for which it is inviting pre-Launch “expressions of interest”.

Emojis are pictorial symbols that often lend emotional context or help to liven up otherwise dry, or ambiguously intentioned, text exchanges.  Originating in the Japanese mobile network in the late 1990s, they are today widely used in emails, on smartphones and in social media all over the world.  As reported in our earlier post, in spite of their popular appeal (and hence a certain level of demand for their availability as domain names), the ICANN Security and Stability Advisory Committee (SSAC) advised against their suitability as domain names in a report released in 2015, leading ICANN to ban their use in gTLDs.

The SSAC’s report stated that the ambiguity in the use of emoji constituted the major obstacle to the adoption of emoji domain names.  It underlined that many emoji are visually similar and can be difficult to distinguish, especially when displayed in small dimensions or by different applications, as no standard specifies as to exactly how they should be displayed.  As a result, a user is less likely to reach the intended resource and may instead be tricked by a phishing site or other intentional misrepresentation.

Another concern raised by emoji domain names is that they will exacerbate the problem of homonym and homographic (“script spoofing”) attacks in the domain name space.  This is the practice of registering a domain name that looks similar or identical to another domain name by substituting certain of its characters for others that resemble them.  This ranges from substituting two letter “v”s to make something that looks like a “w” (vv) to more sophisticated ruses, such as substituting the Latin character O for the Cyrillic IDN character О. Continue Reading

Germany: Making an impact – enforcing patents at trade fairs

Trade fairs offer patent proprietors particular opportunities to take action against infringements of their IP rights. However, successfully enforcing patent rights requires careful planning and expert implementation to avoid pitfalls. Exhibitors who fear being sued for patent infringement at a trade fair must also be well prepared.

Trade fairs are one of the key marketing tools used by companies. In addition to increasing awareness and helping maintain customer relationships, they are primarily a means of showcasing new products.

It is not uncommon for an entrepreneur visiting a competitor’s trade fair stand to lay eyes on a new product that infringes his or her own technological IP rights. Attempts to challenge the infringing item at this early stage and prevent it from coming to market are understandable. A preliminary injunction is a powerful weapon that can quickly put a stop to patent infringement. It also enables the patent proprietor to demonstrate that it is taking action against imitations, thereby making its presence felt and strengthening its market position.

Legal and practical challenges

The German courts rightly impose strict requirements on the issuance of a preliminary injunction based on patent infringement. In practice, not all patents can be enforced at trade fairs. The technology in question must be relatively easy to understand, and it must be possible to reliably determine the infringement in the preliminary proceedings.

The courts also demand that the legal validity of the patent be sufficiently assured. The patent must usually have made it through inter partes proceedings (opposition or nullity). As the case may be, other circumstances may also be sufficient.

From a practical perspective, there is a considerable shortage of time in a trade fair situation. If a trade fair only lasts two or three days, obtaining a preliminary injunction will be a challenge.

Enforcement can also be difficult, for example if the removal of large patent-infringing machinery requires cranes or if the infringing device is part of a larger unit that must be dismantled first.

Enforcing rights

These challenges require a well-considered and coordinated approach. Continue Reading

Hogan Lovells partner gives Law360 a Blockchain 101 for IP attorneys

New York IP partner, Ted Mlynar was interviewed by Law360 for its recent article What IP Attys Need to Know About Blockchain“. Ted comments on the application of blockchain technology, not solely in the financial sector, but across a wide range of industries.

In this interview, Ted also discusses the blockchain patent filing trends of big businesses and the issue of patentability of business methods and patents applied to financial activity in light of recent legal updates such as the Alice ruling. Utility-type arguments for these patents are of specific relevance to this recent technology.

On patent litigation, Ted predicts that, while there is little activity in this space now, “a wave of patent litigation is on the horizon

For more international information, please visit our Blockchain: Linked Ledgers topic center.