December 2017

Welcome to K&P’s monthly IP Law Tracker, providing you with the latest updates on upcoming IP legislation and recent cases. 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

2018 General IP enforcement

On 29 November 2017 the European Commission (EC) published a communication setting out its strategy on IP enforcement. This included the EC taking the following actions in 2018:


·        Launch 3 IP technical co-operation  programmes with China, South East Asia and Latin America

·        Publish a new report on the protection and enforcement of IP rights in non-EU countries in the first quarter of 2018

·        Set up an IP markets watch-list to identify online and physical markets outside the EU that engage in or facilitate substantial IP rights infringements in relation to EU customers

Early 2018 Patents

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


However, the UK has yet to ratify fully the UPC Agreement and an ongoing constitutional challenge to the UPC Agreement in Germany mean that the actual start date of the UPC system are unknown.

31 March 2018 Counterfeits and Piracy

European Commission consultation on future “Counterfeit and Piracy Watch-List” closes. This consultation aims to identify the worst-offending marketplaces outside the EU, with a focus on online marketplaces, in the hope that this will encourage operators and local authorities to take the necessary actions to reduce IP infringement.


Impact on your business:

The results of this consultation could benefit any companies at risk of passing off and unauthorised copying of their products and services.

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. See October IP Law Tracker for further details.

09 June 2018 Confidentiality
EU member states to have transposed Trade Secrets Directive (2016/244/EU) into national law by this date. See October IP Law Tracker for further details.
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 will begin to apply across all Member States. See October IP Law Tracker for further details.


UK Legislation Tracker

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. At the end of November 2017 a Delegated Legislation Committee debated the UK’s Unified Patent Court (Immunities and Privileges) Order 2017. Now all that remains is for the Order to be approved by the House of Commons, House of Lords and Privy Council. However, as discussed above, the ongoing German case against the UPCA means that the actual start date of the UPC is still unknown.

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. See October IP Law Tracker for further details.

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, although it is unclear whether this will happen due to Brexit. See October IP Law Tracker for further details.

Summer 2018 Tax

The UK government is expected to publish draft legislation on a proposal to extend withholding tax royalties and some other payments for the use or exploitation of rights over IP and other intangible assets paid by non-UK residents who make sales in the UK without having a taxable presence in the UK.


In 2018 the government will also review the existing regime for the taxation of intangible fixed assets, to see if there is a case for changes to make it better support UK companies investing in IP.

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. See October IP Law Tracker for further details.


Recent IP case decisions and their impact on you

Trade marks

Red Bull colour mark application rejected as not sufficiently precise to allow registration

The EU General Court has held that Red Bull’s application for blue and silver colour marks comprising 50% blue and 50% silver, was not valid because the colours could be arranged in numerous ways in a 50:50 ratio. As such the marks were not sufficiently precise to be registered.

Impact on your business:

This case highlights the ongoing difficulties applicants have in registering colour marks, as they must be described or presented in a way that is sufficiently precise while not being prescribed so narrowly that they cannot be applied in different formats. Applicants wishing to register a colour mark must therefore think very carefully about how and where they wish to use it before applying.

Joined Cases T-101/15 and T-102/15 Red Bull v EUIPO, 30 November 2017

Court of Appeal rejects 3D mark application for a London taxi as shape lacked distinctive character

The Court of Appeal has rejected an appeal to register the shape of the London taxi as 3D trade marks because they lacked distinctive character. The Court held that the marks were simply a variant on the standard design features of a car, so did not have inherent distinctive character and had not acquired it because the public were not used to the shape of a product being used as an indication of origin.

Impact on your business

As with the colour mark case above, this case demonstrates the difficulties applicants face in trying to register 3D marks. Applicants should therefore think carefully about whether the mark they wish to apply for is sufficiently distinctive and not dictated by technical function to avoid having their application rejected.

The London Taxi Corporation v Frazer-Nash & Anor, [2017] EWCA Civ 1729, 1 November 2017


IPEC held that claimant scriptwriter and his company were the sole author of a film screenplay

IPEC held that the textual and non-textual contributions made by the defendant (an opera singer) were simply useful jargon, helpful criticism and minor plot suggestions that failed to meet the collaboration requirement needed to claim co-authorship and therefore any right in the film screenplay for Florence Foster Jenkins.

Impact on your business:

This case provides some reassurance to creators of copyright work that a relatively high level of input from others is required before they can claim to have co-authored the work and therefore have any right in it.

Martin and another v Kogan and others [2017] EWHC 2927 (IPEC), 22 November 2017