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LimeGreenIP News

Long-awaited Trademark Law of Myanmar to be announced this year

Trade mark owners worldwide should watch out for the long-awaited first modern Trademark Law in Myanmar – very likely to come into force anytime in the coming months.

On 15 February 2018, the Upper House of the Myanmar Parliament passed the long awaited Trademark Bill, Patent Bill, Industrial Design Bill and Copyright Bill in an effort to set up a new regime of protection of intellectual property rights in Myanmar. As the next steps, the Laws will be submitted to the Lower House of the Myanmar Parliament and the Assembly of the Union of Myanmar for approval, and will be signed by the President before coming into effect upon publication in the Myanmar Official Gazette this year, probably in July 2018.

Notably, the Trademark Bill has introduced the first-to-file framework as an effort to align with the international standards. According to the Trademark Bill, the trade mark registration process in Myanmar would involve five steps, namely, filing of an application, formality examination, substantive examination, publication for opposition, and granting registration. Once registered, the mark shall be protected for a ten year period from the date of application, and this term can be renewed perpetually every 10 years for further 10-year periods.

Unfortunately trademarks which have been recorded at the Office of the Sub-Registrar of Deeds and Assurance under the current first-to-use system will not be automatically protected under the new first-to-file system. It is therefore very important that registrants of the current recorded trade marks in Myanmar re-apply for their marks as soon as possible when the new Trademark Bill comes into effect in order to be protected under the new trade mark regime.

The latest Trademark Bill is silent on whether there is a transition period during which such registered marks would remain valid for the registrants to prepare to re-apply for their marks, or whether there is any special examination procedure applicable to such re-applied marks. The latest option under discussion is that there might be a transition period for the registrants of current recorded marks to re-apply for their marks, and the re-applied marks will not be subject to substantive examination, but only to formality examination. Those marks would then proceed to be registration if no oppositions are raised. However, this option is still under consideration by the Myanmar government.

The big take away for trade mark owners worldwide is to review their portfolio in Myanmar so that they will be ready to re-file their marks and file other new marks once the new Trademark Bill comes into effect. We will monitor and report on developments here and are available for advice and guidance.

Scottish glens, German whisky and the question: Are you befuddled?

Court of Justice of the European Union, judgment of 7 June 2018, C-44/17

Glen is a Gaelic word with a wonderful lyrical sound to it and reminiscent of idyllic remote Scottish valleys with the mists from the last rain perpetually lingering over their green slopes. Also, it happens that 31 out of 116 Scottish distilleries producing “Scotch Whisky”, as protected by this geographical indication, are named after the glen in which they are located – Glenfiddich, Glenmorangie, Glenlivet, Glenfarclas, and many other fine drops. But is that enough to enjoin a distillery outside of Scotland from the use of “Glen”? The Scotch Whisky Association thinks so, and has brought infringement proceedings against the owner of the Waldhorn distillery in Southern Germany. He produces the whisky “Glen Buchenbach” – a pun derived from Berglen, the hometown of the distillery, and from the river Buchenbach which runs through its valley.

The District Court of Hamburg on considering the infringement action found that it raised several questions never yet answered in the prior case-law on geographical indications, and referred to the CJEU for clarification. Today, the CJEU gave its answers: It held, in essence, that the geographical indication “Scotch Whisky” could be infringed if consumers would directly think of “Scotch Whisky” when they see the German Whisky called “Glen Buchenbach”. In giving its answers, the CJEU also raised a new question – which it will now be up to the national courts to grapple with.

The challenged use of “Glen Buchenbach”

The defendant produces the whisky “Glen Buchenbach” in a distillery in Berglen in the German Buchenbach valley. The label of the bottles also includes detailed information about the local German origin of the whisky: “Waldhornbrennerei” [Waldhorn distillery], “Swabian Single Malt Whisky”, “Deutsches Erzeugnis” [German product], as well as “hergestellt in Berglen” [produced in Berglen]. The plaintiff, the Scotch Whisky Association, filed an action for infringement of the registered geographical indication “Scotch Whisky” before the District Court of Hamburg. It argued that the Gaelic term “glen”, used in the names of numerous whiskys of Scottish origin, constitutes an unlawful indirect use and evocation of the geographical indication “Scotch Whisky”. Consumers would wrongly assume “Glen Buchenbach” to be produced in Scotland, despite the additional information on the bottles that clearly identifies the whisky as a product of German origin.

The District Court of Hamburg noted that the case raised several questions about the interpretation of the EU Regulation in question (“On the protection of geographical indications of Spirit Drinks”, No. 110/2008):

  • Does “indirect use” or an “evocation” of a registered geographical indication require that it is used in identical or phonetically / visually similar form? Or is it sufficient that the disputed term evokes some kind of association with the geographical indication or the geographical area?
  • If the latter is sufficient, does the national court have to take the context into account in which the disputed term is used? Or can the context not counteract an unlawful indirect use, evocation or other false or misleading indication, even if it indicates the true origin of the product?

The Decision of the CJEU Continue Reading

Japan: Nikkei interviews Theodore Essex – ITC puts weight on the actual situation of patentees

Last month, Nikkei interviewed Senior Counsel Theodore (Ted) Essex on the importance of The United States International Trade Commission (“ITC”) for Japanese companies. Ted first provided an overview of the function of this quasi-judicial federal agency which decides, based on patentees’ applications, whether to give an injunction on infringing products. He commented that the ITC has started putting an importance on whether “the patentee actually manufactures and sells products in the U.S.” when they make a decision. Ted believes that this trend is rooted in an increasing understanding that in order to protect U.S. industries, patent trolls that acquire many patents and sues others, have to be stopped.

Commenting on specific links to Japan, Ted outlined some ITC proceedings where Japanese industrial companies on the world stage have applied for an injunction against each other. He believes that foreign companies are likely to be able to continue using ITC proceedings as they would be regarded as contributing to the U.S. economy as long as they manufacture and sell products in the U.S.

For updates on the more ITC cases and developments please click here to sign up for our Hogan Lovells ITC Section 337 Quarterly Highlights newsletter.

Netherlands – Cybersecurity: Hackman to the rescue!

In May, SIDN, the Registry responsible for the country code Top Level Domain (ccTLD) extension .NL (Netherlands), published an article on the Ethical Hacker Rickey Gevers and the efforts of the Netherlands to make the Dutch public more aware of the risks of cyber criminality online.

The ‘Hackman’ on-line campaign (in Dutch), got underway earlier in May when Ethical Hacker Gevers accepted the challenge of hacking actress and presenter Lieke van Lexmond’s smartphone.  He also gave advice on staying safe online with the aim of increasing awareness of digital security.  As part of the campaign, a series of videos were posted online showing how Rickey Gevers goes about trying to hack into Lieke van Lexmond’s virtual world.  The website also offers a quiz via which people can test their knowledge of online security.  The aim of the exercise was to get the public thinking more about the potential risks of their everyday Internet behaviour.

With reference to the campaign, Ricky Gevers has stated:

From my day job as a cyber-security expert, it’s clear to me that the Dutch public isn’t as aware of digital identity and security as they really should be. Many Dutch people give little or no thought to on-line security. That’s why I took on the role of Hackman. I want to get across the message that all it usually takes is a few simple changes to make yourself much safer on line.”

Gevers had an interesting start to his career, first coming to the attention of the FBI for hacking secure university and embassy networks before moving over to the other side and becoming a cyber-security expert.  His role is now on the right side of the law searching out security weaknesses and hacking into corporate systems in order to discover security flaws.

The Dutch government is also very much present in the fight against cybercrime.  The role of the government in combatting cybercrime dates back to 2012 when they opened The National Cyber Security Centre (NCSC), which works in collaboration with the business community, government bodies and academics in the Netherlands.  Its mission is to continuously monitor suspect sources on the internet and alert public authorities and organisations if a threat is identified.  They advise on how companies can protect themselves against such online threats and also monitor developments in new technologies to ensure that security systems are up to date.

A new bill currently passing through parliament will, if introduced, give public authorities even greater powers to fight cybercrime.  The police and prosecutors will have the power to arrest persons suspected of selling stolen digital data, investigate or hack into suspects’ computers remotely (for instance by installing software to detect serious forms of cybercrime) and intercept data or make it inaccessible (for instance by blocking child pornography or intercepting email messages containing information about offences).

As the majority of us have some kind of activity online, be it via social networking or simply purchasing items from a retail website, the risk is ever present, so awareness is crucial.  There are of course ways that each of us can minimise this risk on an individual level, starting by avoiding the use of public networks, using more complex passwords and being careful about which apps to install.

This post is selected from our Anchovy News publication: Anchovy® is our comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house. For more information please contact us at  anchovynews@hoganlovells.com 

DSM Watch: Copyright Directive moves a step closer as EU Council publishes agreed draft

On 25 May 2018, after months of discussions, the EU Council’s Permanent Representatives Committee (COREPER) finally agreed its position on the draft Copyright Directive (see the official press release here), although it has been suggested that Germany, Finland, the Netherlands, Slovenia, Belgium and Hungary did not support it.

The agreed text (read it in full here) will serve as the mandate for the Council Presidency to negotiate with the EU Parliament, once the Parliament has agreed its own position. The EU Parliament Committee on Legal Affairs (JURI) is due to vote on a form of text on 20-21 June 2018.

The Council’s position differs only slightly from the draft published on 17 May (see our earlier report commenting in full on the draft here).  The only substantial differences between the agreed text and the 17 May draft relate to Article 11 (introducing the controversial new press publishers’ right).  The changes arguably make the exclusion of insubstantial parts of a press publication from the new right less clear than it was, by relegating the test of no ‘independent economic significance’ for short extracts to a Recital. The permitted alternative (and familiar) ‘expression of intellectual creation’ test remains in the operative Article 11.

DSM Watch will be back with an update once the Parliament’s JURI Committee has voted!

GDPR touches DN transfers: Changes to inter-registrar transfer procedure call for extra vigilance

As a result of the obscuring of the WHOIS details for many registrants’ domain name records that has come in the wake of the entry into force of the EU’s General Data Protection Regulation (GDPR) on 25 May 2018, the inter-registrar domain name transfer procedure for domain names regulated by ICANN (primarily gTLDs) is having to adapt itself.  In concrete terms, positive confirmation will no longer be required from the old registrant of a domain name before a registrar transfer proceeds.  Domain name owners should be aware of how the changes will affect them and what they must do in order to ensure that their domain names remain secure.

Previously, when an inter-registrar transfer was carried out, the new registrar would send a “Form of Authorisation” to the current registrant by email and they would need to confirm the request in order for it to go through.  As many registrant email addresses will now be masked in line with the requirements of the GDPR (either because the registrant is based in Europe, the registrar is based in Europe, or the domain name is held with a registrar that has decided to mask all registrants’ contact details regardless of their geographic location), this will no longer be possible.  As such, gaining registrars will be able to skip the Form of Authorisation requirement.

In order to effect a registrar transfer, the gaining registrant will still need to obtain and submit the authorisation code for the domain name and the old registrar will send a notification of transfer of the domain name to the old registrant.  If the old registrant does not cancel the transfer within five days, it will go through.

Additionally, the new registrant will be obliged to provide WHOIS data to the new registrar as this information cannot be pulled from the existing WHOIS record.

Although security on inter-registrar transfers has been reinforced considerably in recent times (notably, with the introduction of the 60-day post-transfer registrar lock), in view of this most recent development, registrants should be particularly vigilant about fraudulent transfer requests and ensure that the email and registrar accounts that they use for managing their domain name portfolios are secure.  Certain registrars are even taking additional measures, such as locking all domain names held with them and issuing new authorisation codes for them, in order to try and prevent domain name theft.

The bypassing of the Form of Authorisation is said to be a temporary measure that will remain in place until ICANN implements a system via which registrars can get access to WHOIS data of domain names they are seeking to transfer. We will be keeping an eye out for any such developments.

This post is selected from our Anchovy News: Anchovy® is our comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house. For more information please contact us at  anchovynews@hoganlovells.com 

US: Partner Lucky Vidmar Speaking at 2018 Rocky Mountain IP & Tech Law Institute

We are proud to be sponsoring and speaking at the 16th Annual Rocky Mountain IP & Technology Law Institute. The May 31 – June 1, 2018 event in Westminster, Colorado brings together national practice and thought leaders, along with PTO and PTAB representatives, for special plenary sessions and networking.

On May 31, Partner Lucky Vidmar will host a Q&A with Joseph Matal, Deputy Director of the United States Patent & Trademark Office. This discussion is part of the institute’s opening session, titled “The View from Alexandria: New Perspectives at the USPTO.” Lucky will also provide opening remarks on the morning of June 1.

The Hogan Lovells IPMT group in Colorado acts as lead counsel on transactions and cases in a wide range of industries, including telecom, software, life sciences, energy and consumer goods.

Please click here to view the full agenda and register for the 2018 Rocky Mountain IP & Technology Law Institute.

Date: Thursday-Friday, May 31-June 1, 2018

Location: Westin Westminster Hotel, Westminster, CO

Presenting Sponsor: Hogan Lovells

Total Brand Care Series: 12 June – Protecting and enhancing your brand’s value is much more than just a trade mark issue.

London: 12 June 2018, 08:30 – 18:30


Join us on 12 June for a seminar specifically designed to help you consider the diverse commercial and legal matters that impact positively and negatively on brand value and the overall success of your business.

Topics will cover:

  • Collecting, using and protecting customer data
  • Protecting your brand when a product liability disaster strikes
  • Brands and antitrust concerns around the world
  • Effective PR communications to minimise damage to your brand
  • Brand creation – get it right from the start
  • The impact of positive social influence on your brand
  • How to legally obtain your desired brand
  • Regulations impacting your packaging, marketing and advertising
  • The power of colour
  • Protecting the valuable investment in your brands

See our topic overview and register your interest on HoganLovells.com  here

For more information on Hogan Lovells’ Total Brand Care offering, visit our topic center and catch our related LimeGreen IP posts

European Copyright Society – Intense discussion on how to move on with the copyright reform

On 25 May 2018, the European Copyright Society (ECS) hosted a very informative and encouraging conference on the current status quo of the pending copyright reform. The title of the summit was well-chosen and equally simple: “EU copyright, quo vadis? – From the EU copyright package to the challenges of Artificial intelligence“. Less simple, however, are the solutions to be found to the multitude of urgent questions discussed by the panel as well as in the auditorium.

As a matter of fact, the core debate focused on the Draft Copyright Directive COM(2016) 593. The latest version of this draft was published by Council’s current Presidency on 17 May 2018 (read our comment on the draft version here). Accordingly, this draft formed the basis for discussion.

The Copyright Reform so far

The first speaker, Jaime De Mendoza Fernández, a legal officer within the Copyright Unit of the Commission’s DG Connect, summarized the efforts of the institutions to move forward with the proposal. The Council has been working on its position for more than a year now, arriving (so far) at the document of 17 May 2018. At the European Parliament, the JURI Committee and its Rapporteur Axel Voss are in charge of preparing a compromise upon which the majority of the parliamentarians can agree. The committee aims to have a final vote on 20/21 June 2018. Once both the Council and Parliament have been furnished with a definite mandate, the trilogue will start. Presumably, this will happen after the summer break.

Text and Data Mining

Christophe Geiger focused specifically on the Text and Data Mining (TDM) exceptions as set out in Articles 3 and 3a of the Draft Directive. He pointed out the scope of the provision, which he personally deems too narrow. As it stands, Article 3(1) excludes innovative startups or journalists, which are not research organizations. Journalists are seen to fulfil a crucial role in society with regard to the freedom of expression and information, and undermining their work could in Geiger’s opinion be considered unconstitutional. He also pointed out the complexity and negative effect of mandatory deletion of content in the case of scientific research (Article 3(1a)). The implications of a TDM exception for private business was also debated. A final  issue touched upon was the necessity of “lawful access” to the work: It was argued that this provision endangers investigative journalism, such as the Panama Papers case, which sometimes relies on sources obtained without lawful access.

Education and Library exceptions Continue Reading

Standard essential patents in the automotive industry – LimeGreen Live webinar 21/26 June

Join us on 21 or 26 June for the third in our LimeGreen Live webinar series, in conjunction with Hogan Lovells Automotive and Mobility Industry Sector Group

This webinar will explore recent SEP case developments in three key jurisdictions—the U.S., Germany, and China. The presenters include three members of our global patent team handling automotive patent litigation and SEP disputes: Katie Feng (China), Joe Raffetto (U.S.), and Benjamin Schroeer (Germany).

The global team will discuss recent developments in their respective jurisdictions, as well as explore the practical impacts of these developments and what to watch out for in the months and year ahead.

The standard essential patent (SEP) threat continues to grow in the automotive industry. The number of declared SEPs continues to rise; standardized technologies continue to be incorporated into more and more cars; and the level of SEP holder activity in the automotive field continues to increase. A coordinated global strategy is essential in this field, as SEP assertions and lawsuits often implicate multiple jurisdictions. Thus, it is important to understand how the legal landscapes are evolving across the world, as courts continue to grapple with how to handle SEP disputes.

Click here to register for this webinar or contact Tom Goddard for more information

Date and time
21 June 2018
09.00 EST
15.00 CET
21.00 China Standard Time

26 June 2018
03.00 EST
09.00 CET
15.00 China Standard Time

LimeGreen Live: Our LimeGreen Live series of webinars provides 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.

Read more about our Automotive and Mobility team on hoganlovells.com