KEMPNER & PARTNERS IP LAW TRACKER

March 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
28 February 2018 European Commission publishes draft Brexit withdrawal agreement

The draft agreement includes provisions for intellectual property rights in both the EU and UK. The agreement sets out a transitional period from 30 March 2019 to 31 December 2020 in which all EU IP law will continue to apply in the UK.

 

Trade Marks

At the end of the transition period, EUTM holders shall automatically be granted an equivalent UK registration.

These new UK rights will not be liable to revocation for non-use on the grounds that the corresponding EUTM hasn’t been used in the UK.

The UK shall also protect all international trade mark and design registrations under the Madrid system that designate the EU.

Designs

Holders of Community registered designs shall be granted an equivalent UK registration.

Holders of EU unregistered design right that arose before the end of the transition period shall enjoy equivalent protection in the UK for the remaining duration of that right.

Patents

The Agreement did not discuss plans for the Unified Patent Court or Unitary Patent.

 

Further information on the agreement here.

 
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.

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 approved the UK’s UPC Order in February 2018 so the government is now 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.  In February, IP professionals wrote to Sam Gyimah MP, the IP Minister, to request that the UPC Agreement be ratified as soon as possible. IP Federation letter here.

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.

 

Recent IP news

Copyright

Music licensing agencies PPL and PRS form music joint venture

The UK’s two music licensing companies, PPL and PRS for Music, have formed a joint venture called – PPL PRS Ltd – to administer the licensing of music used in public. One licence will now cover both companies’ respective rights. Further information here.

Trade marks

CJEU AG delivers new decision on whether the red Louboutin sole is registrable as a trade mark

In a new opinion delivered on 6 February, the AG maintained his view that the red Louboutin sole (image below) fell under the provision excluding the registration of signs that consist exclusively of shapes that give substantial value to the goods, even though the sign in question combines colour and shape, or is a position mark.

 

Impact on your business:

This case  highlights the difficulties trade mark applicants can face when trying to register shape marks, and shows that the combination of shape with other elements is no defence against the risk of refusal.

Louboutin and another v Van Haren Schoenen BV (Case C-163/16) EU:C:2018:64, 6 February 2018