KEMPNER & PARTNERS IP LAW TRACKER

April 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  
19 March 2018 Brexit

The European Commission and UK government published a revised draft Article 50 withdrawal agreement, showing the areas on which agreement has been reached.

 

They have agreed that the proprietors of EUTMs and Community designs will be granted equivalent UK rights at no cost, and the UK shall provide equivalent protection to database rights. However, further discussion is needed to decide how geographical indications will be treated, and there is no mention of the unitary patent (a new EU patent right that may come into force soon).

 
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. The German Court has confirmed it will hear this challenge at some point in 2018, but until this issue is concluded the UPC system start date is still unknown.

 
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 approved the UK’s UPC Order in February 2018 so the government is now ready to ratify the agreement, but it is not yet known when this will happen. The German constitutional challenge to the UPC outlined above means there is no immediate pressure on the UK government to ratify.

 
13 March 2018 Designs

The UK has ratified the Hague Agreement for industrial designs. This means that as of 13 June 2018 those seeking registered design protection in the UK can do so through The Hague International filing system. More information here.

 
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.

 

Copyright

European Commission publishes Notice on Brexit impact on copyright

EU copyright law will continue to apply until 29 March 2019 or the end of a prescribed transition period, but afterwards the UK will become a “third party”, and EU copyright directives and regulations will cease to have effect here. Instead a range of international treaties will govern copyright law between the UK and EU. Full Notice here.

What does this mean?

  • no more sui generis database right in UK
  • no more cross-border portability of online content – UK residents cannot benefit from their digital content subscriptions when travelling in the EU
  • Broadcasters no longer benefit from country-of-origin principle – so copyright consents must be sought in the country of origin and the country where signal is received.

Recent IP case decisions and their impact on you

Trade marks

Goodwill in Leicester student letting agency’s registered trade mark extends beyond local area

An Essex-based student union letting agency has been held to have infringed a Leicester-based student letting agency’s trade mark. The Essex unregistered mark SU LETS was held to infringe and constitute passing off of the Leicester SULETS. Although the Essex agency began using its unregistered mark at an earlier date, it could not use the defence that they operated in different localities because it was held that the Leicester agency’s goodwill in the name extended beyond the local area through Leicester students when they were at home, or after they left university, as well as through their parents or others involved in sorting their accommodation.

Impact on your business

This case shows how the goodwill in a name can extend beyond a local area, so businesses should be wary of using unregistered trade marks similar to those of companies elsewhere, even if they have earlier use and operate in different parts of the country.

Student Union Lettings Ltd v Essex Student Lets Ltd [2018] EWHC 419 (IPEC)

Registered designs

CROCS registered Community design held invalid due to prior disclosure in USA

The European Union General Court has declared that the registered Community design for the famous CROCS rubber clog is invalid due to examples of the design being made available to the public more than 12 months before the design was registered (you cannot register a design for a product made available to a third party more than 12 months previously). Although the design was only shown in the USA, the General Court held that that it may still have come to the notice of interested people in the EU, and so this constituted prior disclosure.

 

The CROCS RCD

Impact on your business:

This case highlights the importance of the need to register a Community design within 12 months of taking it public regardless of where it is initially disclosed, as even if you only show it outside Europe, you still risk a declaration of invalidity for prior disclosure if you then wait more than a year to register.

Crocs Inc v EUIPO (Case T-651/16) 14 March 2018