KEMPNER & PARTNERS IP LAW TRACKER

October 2017

Welcome to K&P’s monthly IP Law Tracker, providing you with the latest updates on upcoming IP legislation and recent case news. If any of the issues covered below are of interest to your business, please call us to discuss on 0113 393 1921.

Legislation and Statutory Instruments

EU Legislation Tracker

Date  
1 October 2017 Trade marks

The EU Trade Mark Regulation (EUTMR) came into force across all member states on 1 October 2017.

 

Impact on your business:

The EUTMR brings two main changes to EU trade marks (EUTMs):

1)      introduction of EU certification marks – these signify that the goods or services they brand comply with the requirements of a certifying institution;

2)     the removal of the need for graphical representation of EUTMs – this may allow many more unconventional EUTMs to be registered, such as non-musical sound marks, motion marks, position marks multimedia and hologram marks.

 
Early 2018 Patents

Unified Patent Court sunrise-period for opting out European patents expected to start early 2018.

 

The UK is expected to ratify the Unified Patent Court Agreement (UPCA) in late 2017, but the UPC can only come into operation once France, the UK and Germany, as well as 10 other UPCA signatories, have ratified it. A German constitutional challenge to the UPCA currently underway means that it is unclear if / when this will happen.

 

Impact on your business:

If enough signatories ratify the UPCA, businesses will be able to file for a single, uniform patent right (the unitary patent) covering all participating EU member states (all except Spain and Croatia). This should provide huge cost-saving advantages and reduce the administrative burden of patent application and enforcement.

 
01 April 2018 Copyright

Regulation ((EU) 2017/1128) on cross-border portability of online content services in the Internal Market will begin to apply across all Member States. This Regulation aims to ensure subscribers to online content services can still access them when they go abroad in the EU.

 

 

 

Impact on your business:

This new regulation will obviously benefit both the users and providers of online content subscriber services by creating pan-EU access.

 
09 June 2018 Confidentiality

EU member states to have transposed Trade Secrets Directive (2016/244/EU) into national law by this date.

 

Impact on your business:

The Trade Secrets Directive will continue to form part of EU law for the remaining Member States following Brexit, even if the UK chooses not to implement it. The Directive will substantially harmonise the way in which EU businesses will expect confidential information to be protected. As such, UK businesses who operate in the EU, or even share confidential information with EU entities, should prepare for it. In particular, the Directive requires that “reasonable steps” are taken to protect confidential information, and it becomes unlawful to acquire trade secrets through conduct which is “contrary to honest commercial practices”. This concept does not exist in English confidentiality law so may require looking to other jurisdictions for examples of how to comply with this requirement.

 
12 October 2018 Copyright

Regulation ((EU) 2017/1563) to implement the EU’s obligations under the WIPO’s Marrakesh Treaty to facilitate Access to Published Works for Persons who are Blind, Visually Impaired, or otherwise Print Disabled will begin to apply across all Member States.

 

Impact on your business:

The Marrakesh Treaty establishes a set of international rules creating limitations or exceptions to copyright at national level for the benefit of the blind and otherwise print-disabled. As a result copyright-holders will be unable to enforce their rights in some cases but these rules will help to end the current “book famine” i.e. the fact that at present only about 7% of published books are made available globally in accessible formats, and in the developing world the figure is less than 1%.

 

UK Legislation Tracker

1 October 2017 Intellectual Property (Unjustified Threats) Act 2017 came into force

The Intellectual Property (Unjustified Threats) Act 2017 (IPUTA) applies to all communications made after 1 October 2017. This Act brings the law on threats in trade mark actions into line with that of patents, but does not extend to copyright.

 

Impact on your business:

IPUTA tightens up the law around communications about intention to bring infringement proceedings so that it now covers threats about any act done in the UK, and includes mass communications as a possible form of unjustified threat. It is therefore essential always to seek legal advice before issuing any communications regarding IP right infringement.

 
Late 2017 / early 2018 Patents

In November 2016 the UK announced its intention to ratify the Unified Patent Court Agreement (UPCA), despite the Brexit vote, and is currently expected to do so by the end of 2017. However, a legal challenge to the UPCA in Germany means that their ratification process is delayed. The UPC system will not begin without Germany’s involvement so the start date is currently unknown.

 

Impact on your business:

When the UPC and unitary patent come into force, businesses will be able to file for a single, uniform patent right (the unitary patent) covering all participating EU member states (all except Spain and Croatia). This is expected to provide huge cost-saving advantages and reduce the administrative burden of patent application and enforcement.

 
31 March 2018 Designs

The UK is set to ratify Hague Agreement for industrial designs by this date. Secondary legislation to put the UK’s accession into effect, namely the Designs (International Registration of Industrial Designs) order 2017 should come into force by the end of June 2018.

 

Impact on your business:

Joining the Hague Agreement will provide UK design owners with more options for protecting their designs. The UK’s membership of the Hague Agreement will allow UK businesses to obtain protection for industrial designs in multiple countries with a single application at WIPO.

 
09 June 2018 Confidentiality

As an EU member, the UK is required to have transposed the Trade Secrets Directive (2016/244/EU) into national law by this date.

 

Impact on your business:

It is unclear whether the UK government will implement the Trade Secrets Directive due to Brexit. The UK is already broadly compliant with the minimum standards of the Directive, so it may be that full compliance will be left to judicial interpretation rather than creating more legislation. However, see note above under EU legislation tracker on the impact on UK businesses of the rest of the EU implementing the Directive.

 
11 October 2018 Copyright

Deadline for all Member States to implement Directive ((EU) 2017/1564) ensuring the EU complies with WIPO’s Marrakesh Treaty to facilitate access to published works for the blind. It is unclear whether the UK government will implement this Directive due to Brexit, but either way the Regulation (outlined above under EU legislation) will apply in the UK at least until it leaves the EU.

 
14 January 2019 Trade marks

January 2019 marks the UK’s deadline to implement the 2015 Trade Marks Directive (2008/95/EC). But following the Brexit vote it is unclear if the UK will implement this Directive into national law.

 

Impact on your business:

If implemented, the Directive will change the definition of a trade mark to a sign that can be represented “in any appropriate form using generally available technology”, thereby removing the graphical representation requirement, which may lead to the registration of more non-traditional UK trade marks. “Relative grounds” invalidity proceedings will also be tightened up so that the earlier mark relied upon must have acquired the necessary level of reputation or distinctive character on the filing or priority date of the challenged mark. The “own name” defence will also be narrowed to bring it in line with that of EUTMs so it can only be used by natural persons, as opposed to business entities.

 

IP and Brexit

The UK government published a paper on post-Brexit collaboration in science and innovation in September. The paper indicates the government’s intention to enter into a framework agreement with the EU for future collaboration on science and innovation following Brexit. Read the full paper here.

Meanwhile the EU27 Position Paper on IP Rights, published on 7 September, states the EU’s preference for any IP rights with a unitary character to maintain their protection in the UK and EU following the UK’s departure.

Recent IP case decisions and their impact on you

Trade marks

ECJ rules EU collective trade mark function not to distinguish goods according to geographic origin

The ECJ has dismissed four joined appeals in oppositions against the registration of some EU trade marks (EUTMs) incorporating the word “Darjeeling”. The oppositions were based on the earlier collective word mark DARJEELING and figurative marks incorporating the word “Darjeeling”. This was because the earlier mark relied upon was an EU collective mark, the essential function of which is to distinguish the goods or services of the members of the related association, and not to distinguish those goods according to their geographical origin.

Impact on your business
This case highlights the difference between EU collective marks – which signify that the goods and services come from members of a particular association – and designations of protected origin. Trade mark applicants must consider carefully what they want to signify through their mark when choosing which form of protection they want to apply for.

Tea Board v EUIPO (Cases C-673/15 P to C-676/15 P (four joint appeals)) 20 September 2017

Copyright / database right

Court finds database right can subsist in a PDF and copyright in an independently designed XML format

In a claim for infringement of database right and copyright in an internet-based electrocardiogram analysis and reporting system, the court found that an independently designed XML format exhibiting the personal stamp and intellectual creation of its author was protected by copyright because it contained content, not just structure. It also held that a pdf document could be to a database because its contents could be accessed, either through electronic conversion, through digital character recognition, reading or retyping.

Impact on your business
This finding will be of interest to any database creators if they experience similar instances of infringement through unlicensed use of a PDF or XML format they have created.

Technomed Ltd v Bluecrest Health Screening Ltd, [2017] EWHC 2142 (Ch), 24 August 2017