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EU: Mark your calendars, Benelux trademark law is changing

As of 1 June 2018, the Benelux Convention on Intellectual Property (“BCIP’) will be amended, giving the Benelux-Office for IP (“BOIP”) new authorities, and expanding the authority of the Benelux Court of Justice. We have summarized the most important changes below.

Cancellation proceedings

Cancellation proceedings of a Benelux trademark (either on absolute grounds, non usus or trademark infringement) should currently be filed either before the competent court of The Hague, Brussels or Luxembourg. It goes without saying that these proceedings can be rather time-consuming since at least the court of The Hague is known to have serious backlog. As from 1 June 2018, it’s possible to file cancellation actions before the Benelux-Office for IP, apart from the existing proceedings before the national courts.

The cancellation proceedings before the BOIP are in line with the opposition proceedings: short time limits for substantiating claims (2 months), the same language regime (language of the defendant, unless the trademark was filed in a different language) and the possibility of suspension on mutual consent. In case of cancellation due to non-use, the defendant is first requested to submit documents that demonstrate the use of the mark. As for the costs, these are substantially lower than court proceedings: the BOIP charges a fixed office fee of EUR 1,400 for handling the proceedings (with a small additional fee for each mark or claim above the third).

Opposition proceedings

As of 1 June 2018, the current grounds for filing opposition will be expanded, making it possible to not only file opposition based on identical prior mark for identical goods (“sub a”) or a similar prior mark in case of likelihood of confusion (“sub b”), but also in so-called “sub c”-matters. Starting from June 1st, the owner of a well-known trademark can thus oppose a younger trademark, even if the mark is filed for dissimilar goods and services, provided that the younger mark takes unfair advantage of, or is detrimental to, the distinctive character of the trademark invoked.

Benelux Court of Justice

The last important change concerns a matter of standardization of Benelux trademark law. Currently, appeals against a decision of the BOIP are filed before the competent courts of either The Hague, Brussels or Luxembourg, depending on the nationality of the claimant. Over the years this has led to divergent national decisions in similar cases. As from 1 June 2018, all appeals against decisions of the BOIP can only be filed before a newly installed Second Chamber of the Benelux Court of Justice, ensuring uniformity of Benelux trademark law.

Looking ahead at AI’s effect on IP in the pharma sector

In April’s issue of Pharma Times Magazine, partner Cullen Taylor explores how new machine learning technologies may have far-reaching, unexpected effects on IP and patent law.

Cullen’s article looks at how AI is likely to accelerate the process of developing drugs and identifying patients who can benefit from them. It outlines patentability challenges for policy makers as well as increased risks for holders of non-patented IP – including trade secrets. A fourth consideration evolves around data, its increased value, monetisation issues and related concerns for data owners.

Read the full article on Pharma Times Magazine here

EU Trade Secrets Directive: Upcoming seminars – Munich/Amsterdam

Trade secrets can be one of your most valuable assets, but due to the lack of a consistent framework in Europe, effectively protecting trade secrets can often prove challenging. This will be changing: by 9 June 2018 Member States of the European Union must implement the EU Trade Secrets Directive into national law. The Directive will harmonize trade secrets laws across all EU Member States and introduce more robust rules to protect trade secret owners and their rights.

With the implementation date on the horizon in Europe, many businesses are reconsidering their trade secrets strategy. Join us in Munich (4 June) and Amsterdam (5 June) to look at its potential impact.


Topics

Munich, Germany (4 June)

  • The EU Trade Secrets Directive: how the Directive will impact the way we protect and enforce undisclosed know-how and business information
  • Case Study tailored to the problems that typically face companies in practice – taking into account the German draft law that has come to light
  • Update on how the EU Trade Secrets Directive will affect employment law

Amsterdam, Netherlands (5 June)

  • The current trade secrets landscape: Europe vs. the U.S.
  • The EU Trade Secrets Directive: how the Directive will impact the way we protect and enforce undisclosed know-how and business information
  • Changes in Dutch law: the legislative proposal for implementation of the Directive and recent developments in case law
  • What we can learn from the U.S. about the upcoming changes: similarities, differences and strategies

To find out more, please contact: Judith Feuerer (Munich) or Sandra Buitdendam (Amsterdam)

UK & EU Focus on non-traditional trade marks and overcoming the hurdles

Since its inception, the harmonised national EU trade mark legislation – and later the EUTM system – has opted for a flexible approach to non-traditional trade marks. In principle “any sign” capable of indicating origin may constitute a trade mark, resulting in several non-traditional marks being registered. These include colours, shapes, sounds, smells, patterns, holograms, movements, three-dimensional signs, and combinations of the same.

The latest EU trade mark reform package further bolsters the position of non-traditional marks. Colours and sounds are now expressly stated to be potentially registerable signs, and – crucially – the requirement of graphic representation has been removed, largely to accommodate registration of non-traditional marks (Ref. 1).

Despite the clear intention of allowing registration of non-traditional marks, maintaining those registrations has often proved difficult, and recently a number of well-known marks have been invalidated. For example: Continue Reading

UK Intellectual Property Office (IPO) responds to Industrial Strategy Consultation

In November 2017 the UK government published its Industrial Strategy. As part of this, the UK IPO made a broad ‘call for views’ from users of the UK intellectual property system on “products, services or other activities the IPO could undertake in order to make the most of the UK’s IP system“, and canvassed opinion on some of the IPO’s specific proposals. The IPO received 53 responses and on 21 May 2018 released a summary of their contents:

Voluntary Register for IP Rights – The idea of a voluntary register for unregistered IP rights looks set to be shelved following “a lack of broad support“. Many respondents were critical and commented on the additional legal and administrative burdens that could arise.

Standard Essential Patents – the consultation summary document strikes a non-committal tone on standard essential patents, stating “the government fully supports standardisation and remains committed to an open and balanced standards environment that supports global, fair and equitable market competition” and the IPO will explore how various measures might improve the framework, including improved guidance. This is a step back from the IPO’s (ambitious) proposal to offer a “system for the determination of licensing disputes between organizations operating in a field involving standards-reliant technologies“, as outlined in the consultation document.

Brexit – Exiting the EU was in the minds of many of the survey’s respondents. The IPO pledges to get “the right outcome for UK inventors, creators and consumers“. Until more is known about the UK’s exit deal and future trade relationship with the EU it is inevitable the IPO is unable to comment on specifics, but it says it has forwarded Brexit-related responses to “the relevant officials”. There is notably no mention of the UPC Agreement or any related survey responses.

IP Finance – The IPO has pledged to work with the British Business Bank and HM Treasury to improve access to finance for high growth IP-rich businesses. A pilot ‘Innovation Enabler’ fund will work with local enterprises and universities in the West Midlands to provide support to local SMEs in implementing an IP strategy and exploring new routes to finance.  The IPO’s IP Finance Toolkit, first introduced in 2015, will also be reviewed to ensure its value in helping SMEs prepare for external investment.

Royalty Free Patents – No mention is made in the responses document regarding the IPO’s proposal to allow marking of patents as ‘free to use’ on their face. We can only assume that there was either a lack of engagement or support.

For further detail please see the response document here and the original consultation document here (PDF links).

DSM Watch: EU Copyright reform – where do we stand?

Reform of EU copyright is the core of the Commission’s Digital Single Market strategy. Various legislative initiatives have been proposed but the “heart” of the reform is without a doubt the proposal for a new copyright directive. While there appears to be a growing consensus on the wording of most articles, a few key provisions remain under debate. In this article we comment on the current 23 April and 17 May 2018 draft proposals published by the Council of the EU (Member State governments’ representatives).

Originally the hope had been to have this legislation finalised by now. However, many provisions have proved controversial. The final vote in the EU Parliament’s committee on legal affairs has recently been postponed to the end of June. The Council published a draft proposal on 23 April 2018. This summarises the main outstanding issues as being: (a) the scope of an additional, optional exception for text and data mining; (b) the scope and term of protection of the press publishers’ right and (c) the scope liability and monitoring obligations for certain service providers (labelled by some the “value gap” provisions). Following a meeting on 27 April, the Council published further draft on 17 May 2018.

Article 3a: Optional Exception for Text and Data Mining Continue Reading

ITC: Commission Amends Rules of Practice and Procedure

On Tuesday May 8, 2018, the U.S. International Trade Commission (“ITC” or “The Commission”) published amended Rules (19 C.F.R. Parts 201 and 210) regarding practice and procedure in an effort to streamline and “improve the provisions of the Commission’s existing Rules of Practice and Procedure.” See 83 Fed. Reg. 21140-64 (May 8, 2018).  The final regulations contain eleven (11) changes from the proposals in the Notice of Proposed Rulemaking (“NPRM”) published by the Commission in the Federal Register at 80 Fed. Reg. 57553-64 (Sept. 24, 2015).

These Rules will go into effect on June 7, 2018, and only apply to investigations instituted after this date.

We have summarized the following amendments in our alert which you can read in full here.

  • Rule 201.16(a)(1), (4) and (f) — The Commission may effect service through electronic means and authorizes parties to serve documents by electronic means.
  • Rule 210.10(b)(1) — The notice of investigation must specify in plain language the scope of the accused products or category of accused products that will be the subject of the investigation.
  • Rule 210.10(b)(3) — The Commission has amended the Rule to note that an initial determination ruling on a potentially dispositive issue in a 100-day proceeding is due within 100 days of institution of an investigation.
  • Rule 210.14(h) — The ALJ will have the authority to sever an investigation into two or more investigations at any time prior to or upon thirty (30) days from institution, based upon either a motion by any party or upon the ALJ’s own judgment that severance is necessary to allow efficient adjudication.
  • Rule 210.15(a)(2) — The Commission has amended its Rules to indicate that filing motions before the Commission preinstitution is prohibited, with the exception of a Motion for Temporary Relief.
  • Rule 210.25(a)(1) and (2) — The Commission has amended its Rules to require that any party may file a motion for sanctions for abuse of process, abuse of discovery, failure to make or cooperate in discovery or violation of a protective order.
  • Rule  210.27(e)(5) — The Commission has amended its Rules to be consistent with the Federal Rules of Civil Procedure 26 concerning the preservation of privilege between counsel and expert witnesses.
  • Rule 210.28(h)(3)(v) and (vi) — The Commission has amended its Rules to provide for the admissibility of party and witness depositions.
  • Rule 210.32(d) and (f) — The Commission has amended its Rules regarding subpoena practice to closer conform with the Federal Rules of Civil Procedure with regard to objections, motions to quash and payment of fees and mileage for appearance in response to a subpoena.

If you would like to sign up for the Hogan Lovells ITC Section 337 Quarterly Highlights newsletter, please click here

Video-log – Patent law in Europe: What pharmaceutical companies need to know

With pharmaceutical competition in Europe continuing to evolve, established companies and new market entrants alike need to understand how key patent litigation tools are shaping the competitive landscape.

Increasing competition within Europe’s pharmaceutical space makes knowing the market and understanding available patent protections more critical than ever for both well established and new market players. Andreas von Falck and Miriam Gundt, partners in our Dusseldorf office, say that companies should consider five key factors influencing patent law across the European market.

Watch the 5min video-log here and note the following 5 summary points:

1. Europe: a hotspot for patent litigation Continue Reading

Straight Talks podcast: New players, new rules – IP disruption in the automobile industry

Not long ago, an automotive “innovation” meant a new way of engineering a powertrain or emissions system, which would then be patented by the original equipment manufacturer (OEM) or supplier. A “gentlemen’s agreement” allowed competitors to maintain similar portfolios, routinely infringe on patents, and sustain relationships that were mostly devoid of litigation.

But autonomous and connected vehicles have changed all that. Advanced technology has introduced new competitors into the market that are not bound by old rules.

In this podcast, IP partners Celine Crowson and Dr. Martin Fähndrich discuss the unprecedented disruptions under way in the automotive industry, and why OEMs want policymakers to let autonomous vehicle technologies influence future regulations — not the other way around.

Listen here and visit our Automotive and Mobility sector site for more insights.

Our trademark lawyers speaking at 2018 INTA Annual Meeting

We are delighted to be sponsoring and speaking at the 140th INTA Annual Meeting, taking place on May 19-23 in Seattle, Washington. The event brings together 10,600 brand owners and IP professionals from over 150 countries to address new issues in trademark law and practice.

Six of our trademark lawyers will represent the practice on the following panels at the event.

General Sessions

  • Katie Feng, Partner, speaking at session CSU50 “Copyright and Trademark: What They Can Learn From Each Other on the Internet Frontier of Trademark Protection.” Sunday, May 20, at 3:00 PM.
  • Andreas Renck, Partner, speaking at session CM21 “The Fate of Color Per Se Marks in Europe.” Monday, May 21, at 11:45 AM.

Table Topics

  • Imogen Fowler, Partner, hosting topic TSU73 “Tackling Look-Alikes in the Food and Beverage Industry in Europe: Strategies for Filing and Enforcing Brand Get-Up.” Sunday, May 20, at 12:00 PM.
  • Charlie Winckworth, Partner, hosting topic TT67 “The Law on ISP Liability and Online infringement: Are we There Yet?” Tuesday, May 22, at 1:15 PM.
  • David Taylor, Partner, hosting topic TT76 “New gTLDs: The Rise of the dotBrand and What Brand Owners Need to Know.” Tuesday, May 22, at 1:15 PM.
  • Julie Schmitt, Senior Associate, hosting topic TW72 “EU Reform Part II : The Provisions Entering into Force on October 1st, 2017” Wednesday, May 23, at 1:15 PM.

Continue Reading