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LimeGreenIP News

European Copyright Reform: Final Vote by JURI postponed to June 2018

The copyright reform is one of the core pillars of the EU Commissions endeavor to create a real Digital Single Market within the European Union. However, despite of the first draft of the new Copyright Directive (COM (2016) 593 final) having been published some time ago (14 September 2016) the EU institutions seem to have difficulties in getting to terms with the final wording.

In Brussels as well as in Strasbourg we see a multitude of differing views on how the new law shall be phrased. This week, the Committee of Legal Affairs of the European Parliament (JURI) has once again postponed its final vote on the respective report determining the Parliament’s view and suggested amendments to the Commission’s draft. Instead of having this on the agenda for the meeting on 23/24 April 2018 it has now been moved to 20/21 June 2018. The report by JURI will serve as the basis for Parliament’s position in the following trialogue with the Council and the Commission.

Issues at stake include in particular the introduction of a neighboring right for press publishers (Article 11) and monitoring obligations for platform operators (Article 13). Only recently a compromise proposal was presented by the Council (see our blog post). A number of other documents that have been leaked over the last few weeks also provide a good insight into the discussion that JURI currently has (compromise proposal on Articles 11 and 13 and other Articles). In order to be able to conduct this discussion thoroughly, the Committee has now time until mid-June.

Trademarks 111: Our 2018 guide to the trademark application process around the world

For the 4th year running, our IP group offers this comparative guide which outlines the trademark application process in 111 countries around the world, broken down into regions, and covering areas such as Application, Examination, Opposition, Cancellation, and Renewal.

 

Click the link below to register for your free copy of the full guide.

 

Trademarks 111

 

 


This guide and other IP reports are accessible on our free platform LimeGreen IP Know-how under Resources

Europe: New Obligations for Platform Operators – Where Do We Stand?

The reform of European Copyright law is at the heart of the European Commission’s efforts to create a true Digital Single Market. The new draft Directive on copyright in the Digital Single Market (“Copyright Directive“, COM (2016) 593) dates back to 14 September 2016. Whilst with many provisions of the draft Directive the final wording has been already agreed upon, the views on how to shape Article 13 of the draft Directive, which is one of the core provisions, are still highly contradictory (see also our previous blog posts here and here). The article concerns the obligation of certain platform service providers to implement protective measures to prevent copyright infringements on their websites. Meshing this aim with the so-called safe harbor principle set out in the eCommerce Directive 2000/31 is causing particular difficulties.

At the end of March, the EU Council took a step forward and issued a compromise proposal on the entire Directive. Almost at the same time, a revised version of the European Parliament’s position as drafted by rapporteur Axel Voss was “leaked”. Both papers appear to suggest a common effort to reach a proposed final text before long, to allow the legislative process to proceed.

Which platform operators are affected?

Both of the currently debated versions restrict the scope of application as the circle of affected service providers is narrowed down. According to Article 2(5) of the Council’s draft, an “online content sharing service provider” should now be defined as:

a provider of an information society service whose main or one of the main purposes is to store and give the public access to a large amount of works or other subject-matter uploaded by its users which it organizes and promotes for profit-making purposes“.

Several exceptions are also planned, including for non-profit online encyclopedias (such as Wikipedia), online marketplaces and Internet access service providers. Axel Voss does however not (yet) list the latter exception.

Communication to the public Continue Reading

“BLACK FRIDAY”: Not a trademark, just a day for special shopping deals

Decision of the German Patent and Trademark Office of 27 March 2018 (ref. no. 30 2013 057 574 – S 33/17/Lösch)

The German PTO has seen the light in the dark of the “Black Friday” battles: The term has been declared free for all to use in commerce, signaling the end of a trademark monopoly that has been aggressively exercised against German retail during the past 18 months. Hogan Lovells, represented by Anthonia Ghalamkarizadeh and Dr. Thomas Richter, assisted PayPal in securing this important victory for the entire German retail market.

The words “Black Friday” resonate with bargain hunters across the globe. Black Friday, the day after Thanksgiving, has a long tradition of special deals and promotions. It is by far the most profitable day of the year for retailers in the US, where the tradition originated. And in the age of global e-commerce, Black Friday as a day for special sales promotions has also become entrenched in many other markets, including Germany. So the commercial attraction of the phrase “Black Friday” is obvious – and holding a monopoly over its use in advertising and retail would be highly profitable. Hong Kong based Super Union Holding Ltd. went down this road when it obtained a German trademark registration for “Black Friday” that covers nearly every retail service under the sun. Following the acquisition of the mark in 2016, the trademark owner and its licensee Black Friday GmbH started to aggressively monopolize and capitalize on the word mark. Numerous retailers in Germany received propositions for expensive licensing deals or were slapped with cease and desist letters warning them off a use of “Black Friday” in their sales promotions. The aggressive enforcement culminated in a lawsuit with significant damages claims against a leading global online shopping platform. Continue Reading

WIPO: Cybersquatting breaks all-time record high

The World Intellectual Property Organization (WIPO), the United Nations specialized agency based in Geneva that administers the Uniform Domain Name Dispute Resolution Policy (UDRP) has released a press release revealing that cybersquatting cases in 2017 reached an all-time high, with 3,074 cases filed in 2017 (compared to 3,036 cases filed in 2016 and 2,754 cases filed in 2015), which represents a 1.3% increase from last year.

Whilst the expansion of the domain name system from 22 generic Top Level Domains (gTLDs), also known as “legacy” gTLDs (such as .COM and .NET) to thus far over 1,200 new gTLDs (such as .GURU, .EMAIL and .PARIS) has contributed to an increase in cybersquatting activity, in 2017 cybersquatting disputes relating to new gTLDs represented only 12% of all cases filed with WIPO (compared to 16% in 2016 and 10.5% in 2015), representing a slight decrease compared to last year.  Domain name disputes involving new gTLDs before WIPO were most common under the .STORE, .SITE, and .ONLINE extensions.

An interesting statistic revealed by WIPO is that, similar to previous years, .COM remains the TLD with the highest number of disputed domain names (with 3,997 domain names out of a total of 6,370 domain names, representing 70.23% of all disputed domain names), followed by .NET (282), .ORG (217), .INFO (141), .STORE (98), .SITE (79), .ASIA (79), .ONLINE (74), and .BIZ (70).  This shows not only that .COM still dominates the domain name space but also that it remains the TLD of choice for cybersquatters.

While the UDRP is most often associated with gTLD domain name registrations, it is worth noting that 76 country code Top Level Domain (ccTLD) Registries have adopted the UDRP or a variation of it and have designated WIPO as dispute resolution provider. For instance, .AU (Australia), .BR (Brazil), .ES (Spain), .IR (Iran), .MX (Mexico) and .NL (the Netherlands) have adopted a variation of the UDRP.   In 2017, ccTLDs represented 17% of cases filed with WIPO (compared to 14% of cases filed in 2016).

The global nature of the UDRP is reflected by the fact that in 2017 proceedings were administered in 15 different languages, with the most popular being English (2,659 cases), Spanish (151, compared to 121 in 2016), French (80, compared to 94 in 2016), Dutch (39), Chinese (33, compared to 72 last year), Swedish (32), Portuguese (26), German (21) and Turkish (14). Whilst English and Spanish continue to grow as the most popular languages in these proceedings, French and Chinese appear to have decreased considerably. Continue Reading

Commission’s notice on Brexit and copyright: Is it as bad as it sounds?

On 28 March 2018 the Commission published a Notice to Stakeholders on the Withdrawal of the UK and EU rules in the field of Copyright. The Notice reminds stakeholders that, unless the UK comes to an agreement with the EU, there will be legal repercussions to Brexit.

The Commission Notice says that all EU “primary and secondary law will cease to apply to the United Kingdom from 30 March 2019”. It goes on to point out that, although the UK is a party to many of the main international copyright treaties, including the WCT, WPPT and TRIPS, these treaties do not provide the same level of protection as EU copyright laws nor do they provide any particular cross-border measures for the benefit of rights-holders or users within the EU internal market.

Whilst it is true that the international copyright treaties do not provide the same protection for copyright works, in all areas, as EU law, it is misleading to say that all EU primary and secondary law will cease to apply on the withdrawal date. In fact the UK’s copyright laws will not change on the day of withdrawal. UK copyright has been subject to a number of EU directives aimed at harmonising national copyright regimes across the EU. These directives have been implemented in the UK Copyright, Designs and Patents Act 1988 and other secondary legislation and will form part of the body of law which the UK has decided to retain on Brexit, pursuant to the government’s proposed European Union (Withdrawal) Bill (expected to be enacted around June of 2018).

This means existing protection for UK copyright works (at least at EU prescribed levels, or in some cases higher) will remain. However, since the UK will no longer be part of the European Union, the Commission’s Notice is correct to point out that (unless the EU and the UK come to an agreement) the UK will lose the benefit of any cross-border measures or rules which have been constructed for the benefit of copyright holders and users within the internal market. For example, regimes which simplify rights clearance within the EU or allow mutual use of protected works, such as the ‘orphan works’ regime. In our view, the two main areas of concern are loss of the broadcasting ‘country of origin principle’ and loss of the benefit of the newly introduced rules on portability of online content services.

Broadcasting Continue Reading

Mexico – Designs, Patents & GIs: IP Law amendments enter into force 13 April

On March 13, 2018, amendments to the “Ley de la Propiedad Industrial” (IP Law) were published in the Official Gazette of the Federation. These reforms will enter into force on April 13, 2018.

The most notable points of these amendments, regarding industrial designs and patents, as well as denominations of origin and geographical indications, are:

Industrial Designs

  • Referring to the creator with the term “designer”, previously “inventor”.
  • Specific provisions regarding “independent creation” and “significant degree”, both related to novelty requirement.
  • Changing the duration of protection to 5 years, renewable by successive periods of 5 years – up to a maximum of 25 years, subject to payment of official fees.
  • Monitoring expiry of the registration, when it is not renewed within the periods set by the Law.

Patents

  • Shortening of the deadline from 6 to 2 months for the reception of information, from any person, regarding the fulfilment of novelty and inventive activity of a patent application.

Patents, utility models and industrial designs

  • Recognition, as an inalienable right, the mentioning of the inventor/designer, in the publication of the application and the registration.
  • Implementation of the publication in the Gazette of applications for utility models and industrial designs once accepted at formal examination.
  • Implementation of the publication of divisional applications for patents, utility models and industrial designs.
  • Consultation of pending application files of patents, utility models and industrial designs, once published in the Gazette.

Appellation of Origin and Geographic Indications

  • The definition of appellation of origin is modified, taking into account the inclusion of geographical indications.
  • A common procedure for the applications of declaration of protection to appellations of origin or geographical indications, as well as for their authorization of use has been set up.
  • Inclusion of provisions for the cessation of the effects of declarations and authorizations for use.
  • New provisions for the recognition in Mexico of appellations of origin and geographical indications, protected abroad, are incorporated.
  • New administrative infringements considering the production, storage, transportation, distribution or sale of products of national origin without certification to the denomination of origin or geographical indication and its Official Mexican Standard as a crime, if the purpose is to obtain an economic benefit; a crime that will be prosecuted through a lawsuit, punishable by imprisonment of three to ten years and a fine of two thousand to twenty thousand units of measurement and update (UMA Unidad de Medida y Actualización).

The Spanish language version is available here / la version en lengua española está disponible aquí

Mexico – Trademarks: IP law reform package approved

The Mexican Senate approved a package of reforms to the provisions of the “Ley de la Propiedad Industrial” (IP Law) comprising important changes to the protection of trademarks in Mexico. These reforms can be considered as the most important reforms to the IP Law in recent years.

The reform includes extensive changes. We would like to highlight in particular the following three important points for brand owners

  • Trademark Use:
    • Three years from registration of a mark in Mexico it will now be legally required to declare actual and effective use of a trademark. If this declaration has not been made, the registration will be considered as lapsed.
    • For renewals it will now also be required to declare the actual and effective use of the trademark.
  • Nullity action based on bad faith:Nullity claims based on bad faith will no longer be restricted to registrants who are agents, representatives, users or distributosr of the owner. It will now be sufficient that there has been any kind of direct or indirect relationship between the bad faith registrant and the owner of the prior rights.
  • Protection for non-traditional trademarks:The catalog of signs admissible for trademark protection will be extended to “non-traditional trademarks”, namely holographic signs, sound and smell marks.

Other important areas of changes to the IP Law are summarized below:

  • Amendments to the provisions on signs that are not registrable as a trademark.
  • Amendments to the provisions on collective marks.
  • Amendments to the provisions on well-known and famous brands.
  • The opposition procedure, recently incorporated into the legal framework of Industrial Property, will be modified.
  • Provisions on certification marks will be incorporated in the IPL for the first time.

The reform package will be published within the next few days in the Official Gazette of the Federation of Mexico. It is expected that the reforms will enter into force 60 days after their publication.

We will follow up with reports on each of the specific reform topics.


The Spanish language version is available here / la version en lengua española está disponible aquí

ICANN halts applications for .CORP, .HOME and .MAIL

On 4 February 2018, the Internet Corporation for Assigned Names and Numbers (ICANN) passed a Resolution to halt the new generic Top Level Domain (gTLD) applications for .CORP, .HOME and .MAIL.  As a result, and in the interest of fairness, ICANN has agreed to refund the full application fees for each TLD (USD 185,000) to the multiple applicants for each TLD.

ICANN’s position on this matter has essentially not changed since 2013 when it initially decided to defer the delegation of the applications for .CORP, .HOME and .MAIL because of potential risks in terms of name collision and the corresponding risk to the stability and the integrity of the Domain Name System.

This stems from a 2013 study that was carried out on this issue with potentially broad implications, both for new gTLD applicants but also for corporations with a local name space such as a company’s internal corporate network.  The study highlighted high risks of collision for the strings .CORP, .HOME and .MAIL.

In practical terms, the issue of name collision is, for instance, that the result of a lookup of myhost.corp (intended to be within the private network) may change if the TLD .CORP is delegated into the Internet root zone.  This TLD is often used on corporate networks, so it is not clear what could happen to applications on such networks when a lookup of myhost.corp is done but it could possibly fail.  This would depend on the DNS configurations of the respective private networks.

In its meeting of 4 February 2018 ICANN basically reached the conclusion that the concerns identified in terms of name collision remained and that it would thus defer the delegation of the applications indefinitely for the three TLDs by multiple applicants (20 in total) and refund their application fees in full.

ICANN stated that a secure, stable, and resilient internet was its number one priority and that it had:

“made a commitment to the internet community to mitigate and manage name collision occurrence”.

Finally, on the issue of whether the same applicants would be given priority in subsequent rounds on the respective TLDs (.CORP, .HOME and .MAIL), ICANN determined that it would not grant such priority.


First published on 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 

China issues new rules tightening up on overseas transfers of intellectual property rights

On 29 March 2018, the Chinese State Council released the External Transfer of Intellectual Property Rights Measures (for trial implementation) (the IPR Overseas Transfer Measures) providing for further governmental scrutiny of overseas transfers of IPR from the People’s Republic of China (PRC or China), with a focus on the impact of such transfers on national security and/or the impact on the development capabilities for certain key industries in China. More specifically, the IPR Overseas Transfer Measures set forth procedures for various governmental departments, including those in charge of Intellectual Property (IP), technology, agriculture, and forestry to become involved in reviews of such transfers conducted by the Ministry of Commerce (MOFCOM).

The IPR Overseas Transfer Measures became effective from the date on which they were “printed and issued”, which we presume to be 29 March 2018 (not 18 March 2018 the date on which the IPR Overseas Transfer Measures were passed). As is customary in China, there is no indication as to the length of the “trial implementation” period.

Though many of the details on how the IPR Overseas Transfer Measures will be implemented remain to be worked out, the message is clear that there will be a stepping up in the enforcement of Chinese technology export regulations, potentially affecting multinationals that engage in research and development (R&D) activities in China or who are parties to IPR licensing transactions that may result in improvements being made by their Chinese licensees which they wish to have exported to the overseas contracting party.

We have published a report covering:

  • Scope of the IPR Overseas Transfer Measures
  • Evaluation standard
  • Review mechanisms (exported tech & acquisitions by foreign inventors)
  • Supplemental rules to be issued
  • Conclusion

Please read the report here