KEMPNER & PARTNERS IP LAW TRACKER

February 2018

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  
2018 Patents

Unified Patent Court (UPC) sunrise-period for opting out European patents expected to start early 2018. German ratification is required for the UPC system to begin, but a current German constitutional challenge to the UPC is stalling this. Until this issue is concluded the UPC system start date is still unknown.

 
31 March 2018 Counterfeits and Piracy

European Commission consultation on future “Counterfeit and Piracy Watch-List” closes. See December 2017 IP Law Tracker for further details.

 
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 2017 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 2017 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 2017 IP Law Tracker for further details.

 
2018 General IP enforcement

On 29 November 2017 the European Commission (EC) published a communication setting out its strategy for IP enforcement in 2018. See December 2017 IP Law Tracker for further details.

 

 

UK Legislation Tracker

2018 Patents

The Privy Council is expected to approve the UK’s UPC Order in February 2018. Once done the government will be ready to ratify the agreement.  However, as discussed above, the ongoing German legal challenge to the UPCA means that the UPC start date is still unknown.

 
31 March 2018 Designs

The UK is set to ratify Hague Agreement for industrial designs by this date. The Designs (International Registration of Industrial Designs) Order 2018 was made on 11 January and will come into force on the date the UK becomes bound by the Hague Agreement. See October 2017 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. A government consultation on the UK implementation of this Directive closes on 16 March 2018. See October 2017 IP Law Tracker for further details.

 
Summer 2018 Tax

The UK government is expected to publish draft legislation on withholding tax royalties for non-UK residents who make sales in the UK but pay no tax here, as well as review the existing regime for IP taxation.

 
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 2017 IP Law Tracker for further details.

 

Brexit and IP

Commons Select Committee reports on Brexit’s impact on creative industries, tourism and the digital single market

The report highlights the major challenges all these industries face due to the uncertain nature of the future regulatory environment, and calls for the Government to take a number of actions, including:

  • Providing clarity on copyright protection (an area currently governed mainly by EU law)
  • Avoiding a skills gap in increasingly globalised and international sectors – overhaul existing visa system for non-EU nationals and recommend analysis of workforce
  • Clarifying its position on whether EU Intellectual Property transposed into UK law will continue to apply after Brexit, and if not, what contingency plans the Government has in place to ensure that the current level of Intellectual Property protection remains following the UK’s departure from the EU. They highlight the potential loss of the Unregistered Community Design right as a particular concern to the design and fashion industries.

Full report, summary and conclusions available here.

Recent IP case decisions and their impact on you

Registered Designs

Registered designs invalidated by earlier trade mark rights

The EU General Court has held that 2 RCDs for an ice cream cornet and a display box for the cornets were invalid due to a likelihood of confusion between them and an earlier international figurative trade mark designating Bulgaria.

Display box RCD Earlier international trade mark

 

Impact on your business:

This case highlights the need for registered design applicants to consider both registered design and trade mark prior art, as the bar for likelihood of confusion is lower in relation to earlier trade mark rights than earlier registered design rights.

Şölen Çikolata Gıda Sanayi ve Ticaret AŞ v EUIPO (Case T-793/16) 7 February 2018

Trade marks

easyGroup’s EASY trade mark not infringed by EASYROOMMATE

easyGroup owns and uses a large number of trade marks containing the prefix “easy”, including EasyJet. They opposed W3 Ltd’s use of EASYROOMMATE for online property-sharing services.

Held that easyGroup’s EASY mark was invalid because it described the quality or characteristic of the services provided, and the mark alone without a suffix had not acquired distinctiveness. As such, W3 Ltd’s mark did not infringe.

Impact on your business:

This case highlights the importance of avoiding overly descriptive trade marks as these are difficult to enforce without acquired distinctiveness and can be vulnerable to invalidation proceedings.

W3 Ltd v easyGroup Ltd and another [2018] EWHC 7 (Ch), 12 January 2018